Patent Cooperation Treaty (PCT) -...

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Patent Cooperation Treaty (PCT):Latest Trends & Strategies for Applicants

Lisa BannapradistDirector, Search Services


Outline

▪ Learn about the latest PCT filing trends

▪ Strategies for selecting an international searching authority

▪ The future of the PCT system and the IP5

▪ Questions

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2016 Record year for PCT application filings

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2016’s Top Receiving Offices

▪ Top 15 receiving offices account for 96% of all PCT

applications filed

▪ U.S. received more applications than any other office

4


Filing Trends for the Top 5 Receiving Offices

▪ U.S. largest filer since PCT’s 1978 start

• Only of top 5 with 2 years of negative growth = -0.9% in 2016; -7.1% in 2015

▪ China = double digit growth rates since 2002

• China will over take U.S. within the next 2 years to become

largest user of PCT system (if current trends continue)

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Shift Toward Asia

▪ Due to growth in filings from China, Japan and Korea

▪ Asia will account for half of all PCT filings within the next 2 years

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Subject Matter Trends = Digital Communication

▪ Largest share of Total PCT applications

▪ Top 3 category of most Top 10 PCT Applicants (see aqua)

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Published Language

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ISA Choices for PCTs filed with the U.S. RO

Applicant must choose an ISA upon filing the PCT application

Competent ISAs:

▪ USPTO – United States

▪ EPO - Europe

▪ KIPO - Korea

▪ IPAU - Australia

▪ ILPO - Israel

▪ Rospatent - Russian Federation

▪ JPO – Japan

▪ IPOS - Singapore

Not listed:

▪ SIPO - China

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ISA Search Costs

ISA Search Fee in U.S. Dollars – Effective 09/01/2017

Regular Small Entity Micro Entity

USPTO – U.S. $2080 $1040 $520

EPO – Europe $2099 $2099 $2099

KIPO – Korea $1114 $1114 $1114

IPAU – Australia $1688 $1688 $1688

ILPO – Israel $963 $963 $963

Rospatent – Russian Fed $482 $482 $482

JPO – Japan $1372 $1372 $1372

IPOS – Singapore $1552 $1552 $1552

• EPO - consistently highest up front costs• Rospatent - consistently lowest up front costs• US - for small entities and micro entities


USPTO as ISA

▪ Beneficial for small entities and micro entities

• Small entity = (a) nonprofit org; (b) <500 employee business; (c) university; OR (d)

individual inventor

• Micro entity = [(a) small entity; (b) not inventor on > 4 prior patent apps; (c) limited

gross income; AND (d) not granted interest in invention to an entity that does not

meet gross income limits]; OR related to a US institution of higher education

▪ May eliminate U.S. national stage fees for both search and examination

• Where the written opinion prepared by ISA/US or international preliminary

examination report prepared by IPEA/US indicates that all claims satisfy the

provisions of PCT Article 33(1) - (4)

• Savings on international phase preliminary exam fee if USPTO is ISA

• Subject matter expertise (e.g., business methods)

• Compare to EPO: Prior to 2015, EPO would not carry out an international search for

any application which contained one or more claims relating to the field of business

methods

• More forgiving of multiple independent claims

• Not as strict on lack of unity

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EPO as ISA

• High up front costs

• USPTO consistent at $2080 for large entity (since at least 2009)

• EPO cost varies but usually higher: $2426 on 06/12; $2366 on 01/15; $2099 now

• International phase preliminary examination fee is the same no matter if EPO was ISA

• Subject matter limitations

• Prior to 2015: NO search if one or more claims related to business methods

• Since 2015:

• Yes on technical arts = business methods that also contain technical features

• No on non- technical arts = mere business methods (e.g., software)

• whenever an application relates only to a business method as such

• Can refuse to examine, or otherwise examine but simply exclude subject matter

• Strict with unity of invention

• May require payment of additional search fees; Can cost more over time

• $2080 for large entity; $1040 for small entity; $520 for micro entity

• If extra fees not timely paid, this can restrict amendments later on in the European

phase to only the subject matter that has been searched

• Easing passage through EPO prosecution12


KIPO as ISA

▪ Lowest up front search cost of the Top 5

▪ Timeliness of search

• Faster than US, EPO, Russian Federation

• Slower than JPO

▪ Language differences

• May search in Korean, English and Japanese

• Less capability for European languages

▪ Lack of experience

• Deemed competent ISA only since 01/01/2006

▪ Allowance rates on 102/103 grounds


JPO as ISA

▪ Timeliness of search, fastest of Top 5

▪ Restricted use; 4 requirements must be met:

• (1) the international applications are submitted in English

• (2) the claims of the international applications are directed to

the field of green technology as defined by certain IPC

classes (see Official Notices (PCT Gazette) dated 25 June

2015, pages 108 et seq.);

• (3) the JPO has not received more than 5,000 international

applications from the USPTO during the three year period

from 1 July 2015 to 30 June 2018, not more than 300

applications per quarter during the first year, and not more

than 475 applications per quarter during the second and

third years; AND

• (4) the JPO is chosen as a competent authority by Applicant


Other ISAs – IPAU Australia

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• Not part of Top 5

• Restricted Use

IP Australia will not act as an ISA if it has received more than 250 international applications from the USPTO during a fiscal quarter, as indicated in the Official Gazette at 1409 OG 302 on December 30, 2014.


Other ISAs – Continued

▪ Rospatent / Russian Federation

• Not part of Top 5

• Lowest up front cost of all ISAs

• Level of quality

▪ ILPO / Israel

• Restricted Use

The ILPO will not act as an ISA for: (1) more than 75 applications

per fiscal quarter; and (2) applications with one or more claims

directed to the field of business methods as determined through

classification in G06Q of the International Patent Classification

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Subject Matter Trends per Country


What is the IP5?

▪ USPTO, EPO, JPO, KIPO, SIPO

▪ The Five IP Offices (IP5) = The 5 largest intellectual property offices

in the world

▪ Goals:

• Global co-operation

• Improve efficiency of the examination process for patents

worldwide

• Eliminate duplicative work

• Enhance quality and guarantee the stability of patent right

▪ The IP5 accounts for

• 90% of all patent applications filed worldwide

• 93% of all work carried out under the Patent Cooperation Treaty

(PCT).


IP5 and Subject Matter Categories

Historical numbers of grants broken down by IPC codes

▪ Counts of numbers of grants with breakdowns by IPC classes (3

digits) and country of origin. SIPO data are broken down by IPC

classes and domestic vs foreign.

▪ Patents granted by IPC class and by country of origin at the IP Five

Offices

Source: http://www.fiveipoffices.org/statistics/statisticaldata.html

http://www.fiveipoffices.org/statistics/statisticaldata/ip5grants2016.xlsx

http://www.fiveipoffices.org/statistics/statisticaldata.html


The Future of the IP5

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The IP5 Offices have set up three Working Groups

(WGs) dealing with projects and topics in the areas of:

▪ Classification (WG1)

▪ Global Dossier and patent information (WG2)

▪ Work-sharing and quality (WG3)

▪ Harmonisation of patent practices and procedures

Source: http://www.fiveipoffices.org/activities.html

http://www.fiveipoffices.org/activities/class.html

http://www.fiveipoffices.org/activities/globaldossier.html

http://www.fiveipoffices.org/activities/ws.html

http://www.fiveipoffices.org/activities.html


Conclusion

Questions?

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