1. Patent Cooperation Treaty Improvements Past, Present & Future
Charles Pearson
Director
International Patent Legal Administration

2. PCT Improvement Plans 2009 – International Bureau
Implementation of recommendations to improve the functioning of the PCT: Road Map
2012 – European Patent Office
Proposals for further development of PCT services and products
2012 – United Kingdom and United States
PCT 20/20
2013 – Japan
PCT Kaizen
2014 – Korea
PCT 3.0

3. PCT 20/20: Overview
Joint proposal by the United Kingdom and the United States of America
Presented at the fifth session of the PCT Working Group in Geneva in 2012
Contained twelve proposals for further improvement of the PCT system

4. PCT 20/20: Proposals (1) Self-service Changes
Applicants could make corrections to
bibliographic data
priority claims
Corrections would be effective immediately, providing instant feedback of the approval to the applicant
Limited Chapter I Claim Amendments
Permitting limited claim amendments prior to search report
such as correcting misnumbered claims
To help both the ISA and applicant
Simplify Withdrawal of International Applications
Easing, in certain situations, the requirements for withdrawing PCT applications
obtaining signatures from all applicants

5. PCT 20/20: Proposals (2)
Standardizing Fee Reductions for National Stage Applications
National and regional Offices would offer a national stage fee reduction for national stage applications which contain only claims which were indicated as meeting the criteria of PCT Article 33 (2)–(4)
 International Small/Micro Entity Fee (or Discount)
A small entity fee would permit small businesses and independent inventors in all countries to obtain worldwide patent protection at lower cost through use of the PCT system
USPTO created small/micro entity fees for RO/US transmittal and ISA/US search fees on 01 January 2014

6. PCT 20/20: Proposals (3) Integrate National/International Stages
Use a national first action on the merits for PCT search report
a search report prepared by an ISA would constitute
PCT report and
a national Office action for that office
Require responses to negative comments at the national stage
national/regional Offices would be encouraged to require, at the time of national stage entry, a complete response to any outstanding negative indications made by the ISA/IPEA
Mandatory Recordation of Search Strategy
To provide confidence in the quality of PCT searches
Examiners would record their search strategy and make such information available to other offices
Some Authorities currently making search records publically available (US, CA, AU, IL)

7. PCT 20/20: Proposals (4) Collaborative Searching (2+ Offices)
Proposal would eliminate Supplementary International Search
Examiners from multiple offices would collaborate to create a single search report
generally greater quality than a report prepared by a single examiner
more useful in the national stage than current reports
Collaborative search has completed phase 2, phase 3 in development
Mandatory Top-up Searches
Examiners would perform top-up searches to uncover recent documents
to increase the quality of PCT Reports
Implemented for IA having demands filed on or after 01 July 2014
Development and Implementation of Global Dossier
Eventual incorporation into the PCT
Applicants would file a single application and thereafter the movement and duplication of documents would be minimized or even eliminated by the creation of a “one-stop” portal for all stakeholders

8. PCT 20/20: Proposals (5)
Formal Integration of the Patent Prosecution Highway (PPH) into the PCT
Fast track of national stage applications
for national stage application which presented only claims meeting PCT Articles 33(2)-(4) (e.g. a positive report)
Improve reuse of PCT work at the national stage
Making the Written Opinion Of The International Searching Authority Available to the Public After International Publication
Enable national offices and third parties to view the written opinion of the ISA before an application enters the national stage,
The written opinion would become available upon international publication
Implemented for IAs filed on or after 01 July 2014

9. PPH Basics What is the Patent Prosecution Highway?
A system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices
Enables an applicant who has received a determination of allowable claims from one office to obtain fast track processing of corresponding claims in other offices
PPH began as pilot between JPO and USPTO in 2006.
Today – 30 offices participate worldwide; 27 with USPTO

10. How Does PPH Work?
Applicant receives a positive examination result from a PPH participating office.
An national/regional office action indicating allowable claims
Patent Cooperation Treaty (PCT) Written Opinion or PCT International Preliminary Report on Patentability
Applicant files a PPH request in a corresponding application in another PPH participating office
Once the PPH request is granted, the examination of the application in the second office is expedited

11. Filing a PPH Request (1) Eligible Applications
Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) must have the same earliest date (priority or filing date)
Claims in the OLE application must sufficiently correspond to allowable claims in the OEE application
Substantive examination has not begun in the OLE application

12. Filing a PPH Request (2) Required Documents
PPH request form, which includes a claims correspondence table
Copy of the most recent rejection issued by the OEE (if any)
Information disclosure statement (IDS), which lists any documents cited by the OEE, and document copies
Note: Item 2 and the document copies in item 3 need not be submitted if the OLE can obtain them from electronic databases

13. Filing a PPH Request (3) Cost of Submitting a PPH Request
Petition fee: $0
Attorney fee
minimal requirements involved
harmonized procedures under Global/IP5 PPH

14. PPH Benefits – USPTO (1) Fewer office actions per disposal
Higher first action allowance rate
Higher grant rate
(Fiscal Year 2013)
PPH
All Cases
Actions per disposal
2.2
3.0
PPH
All Cases
First Action Allowance Rate
36%
13%
PPH
All Cases
Grant Rate
83%
66%

15. PPH Benefits – USPTO (2) Reduced RCE filing rates Reduced appeal rates
All Cases
RCE Rate
12%
25%
PPH
All Cases
Appeal Rate
0.3%
2.5%

16. Other PPH Benefits Special status Improved search/examination quality
PPH applications are advanced out of turn for examination
Reduces the amount of time to receive office actions and patents
Improved search/examination quality
Search results are shared among offices
A JP examiner is normally more adept than a U.S. examiner at searching Japanese art. The JP search results are used by the U.S. examiner to produce a more thorough examination
Reduced overall pendency
The efficiencies gained by work sharing help patent offices to reduce the overall application backlog, which affects all cases

17. Types of PPH Agreements
IP5
USPTO
EPO
JPO
KIPO
SIPO
Global
Bilateral Agreements

18. Global/IP5 PPH Countries

19. Global/IP5 PPH Principles
Reciprocity
- Every participating office in Global PPH or IP5 PPH has agreed to accept the work product of any other participating office as the basis for a PPH request. (Note: some offices participate in both Global PPH and IP5 PPH.)
Common Requirements
- Every participating office has agreed to a common set of requirements to provide applicants with a generally standardized PPH request process

20. Bilateral PPH Agreements
Austria
Columbia
Czech Republic
Germany
Mexico
Nicaragua
Philippines
Singapore
Taiwan

21. For More Information
For general information concerning PPH, visit
If you have specific questions about PPH, please
To receive future USPTO updates on PPH, sign up for USPTO’s e-Commerce e-Alerts by visiting:

22. Collaborative Search & Examination (1)
Pilot project on collaborative search and examination under the PCT between USPTO, KIPO, and EPO
Objective was to allow examiners from different authorities in different regions and with different language specialties to work together on one PCT application with the aim of establishing a high quality international search report and written opinion
First pilot project completed Sept. 2010
Small scale (18 examiners and 36 PCT applications)
Main objective
test feasibility of a collaborative approach between examiners
general assessment of the benefits / disadvantages form a qualitative point of view
Second pilot project completed Oct. 2012
Larger scale (24 examiners and 192 PCT applications)
more quantitative assessment of the approach
fine-tuning and implementation of operational working model

23. Collaborative Search & Examination (2)
Second pilot preliminary views of EPO (as example)
In 87% of cases, feedback from USPTO and KIPO examiners resulted in addition of citations to ISR
27% resulted in amendments to WOISA
In 92% of cases, lead examiner (EPO) perceived the final products (ISR and WOISA) improved as a result of collaboration
in more than 1/3 of cases, significant improvement
In 70% of cases, EPO examiners (as peer examiners) would trust both search and exam results produced collaboratively
In 30% of cases, complementary examination would be required at EPO due to differences in patent law
For example: medical use, method of treatment, etc.

24. JPO - USPTO Cooperation
Agreement made to launch pilot programs as early as April 1, 2015 for cooperation in patent examination initiatives including
JPO conducting international search and international preliminary examination of international patent applications received by the USPTO
will become competent ISA or IPEA for applications filed with RO/US
priority area under the pilot program will be Green technology
target number of the applications under the program will be about 5,000 over three years

25. Color Drawings
The restriction to the use of only black and white line drawings in international applications creates difficulties for adequately explaining certain types of invention
The International Bureau has proposed
Permit filing of international applications with color drawings at any receiving Office willing to receive them in appropriate electronic form
This is likely to mean allowing JPEG or PNG file formats, either as part of an XML application or embedded into a PDF file
Conduct all international stage processing in color, including formalities examination, international publication, international search and international preliminary examination
Allow the optional centralized submission of black and white drawings by the applicant for use in the national stage before those designated Offices which still require black and white
Alternatively, the applicant could separately submit replacement sheets to a designated Office if required in the national stage

26. Treatment of Sequence Listing
Proposal to treat any sequence listing filed on the international filing date as part of the international application as filed
Even if not specifically indicated as forming part of the international application in the Request
Protects applicant from reaching the national stage with a fatal defect in their applications
Eliminates confusion on the part of the national offices as to what constitutes the disclosure in the international application