1. February 2016Patent Procedures Management PCT Direct Cost effective strategy for global patenting

2. Patent Procedures Management, European Patent Office PCT Direct – Synergy for fast-track  Early Certainty from Search (ECfS) −EPO delivers not only a high quality prior art search, now also timely ! −Since July 2014, all EPO searches are to be delivered within 6 months −As of July 2016, the search backlog will be dissolved. −EPO has adapted a better examiner work priority model, called ECfS.  Patent Prosecution Highway (PPH) −leverage fast track patent examination procedures −obtain patents more quickly and efficiently −Operational PPH pilot programme between EPO and −China, Japan, Korea, US, Canada, Israel, Mexico and Singapore −MoUs with IP Australia and Columbia  Accelerated examination at EPO (PACE) −Examination communication issued in 3 months 2

3. Patent Procedures Management, European Patent Office PCT Direct - shorten overall time to grant & reduce costs for applicants  significantly shorten overall time to grant  reduce costs for applicants  strong case at the start of PCT −react to objections when filing an international application claiming priority in the form of a reply, the ‘PCT Direct letter’  seamless fit into free fast-track prosecution through PPH  all EPO searches delivered within six months through ECfS  expedited grant following positive opinion 3

4. Patent Procedures Management, European Patent Office High probability of issuing a positive opinion Fast track grant at EPO through ECfS Fast track grant at other offices through PPH  Having had your 1st EP, PCT or 1st national filing searched by EPO  File a PCT application, with EPO as ISA, claiming priority from the searched 1st filing along with a ‘PCT Direct letter’  Use PCT Direct letter as an informal reaction to objections raised in the written opinion of the 1 st filing to: strengthen your case by including explanations, new arguments or amendments to your application.  EPO establishes ISR and WOISA on the basis of the PCT Direct letter without direct reference to the first filing 4 How PCT Direct Works

5. Patent Procedures Management, European Patent Office 5 PCT Direct for US 1st filing EP, National, PCT 1st filing EP, National, PCT PCT 2 nd filing + reply to WOISA on 1st filing at any RO with EPO as ISA 0 m < 3 m 6 m < 12 m EPO ISA EPO ISR + WOISA on 1st PCT ISR + WOISA on 2 nd PCT WOISA positive? PCT Chap II Entry Reg. And Nat. Phase with PPH Euro-PCT high priority direct grant 17 m 37 m NOYES Priority claim

6. Patent Procedures Management, European Patent Office Need more information? 6  Visit www.epo.org  Follow us on www.facebook.com/europeanpatentoffice twitter.com/EPOorg www.youtube.com/EPOfilms www.linkedin.com/company/european-patent-office  Contact us via www.epo.org/contactwww.epo.org/contact

7. Patent Procedures Management, European Patent Office 7 Thank you for your attention

8. Patent Procedures Management, European Patent Office Since July 2015: Applicants filing a PCT application with ISA/EPO and claiming priority from a 1 st filing searched by EPO (e.g. EP, PCT or national application), can: −Reply to the 1 st search opinion established by the EPO rebutting examiner’s objections and/or explaining the meaning of the amendments if any, Examiners will establish ISR and WOISA on the basis of the reply to the earlier search opinion, without direct reference to the first filing, with high probability of issuing a totally positive opinion and with at least some claims being considered patentable. 8 PCT Direct: Linking PCT and 1st filings

9. Patent Procedures Management, European Patent Office 9 Example PCT Route with RO/US and EPO/ISA 9 1 st filing at USPTO PCT filing under US priority at RO/US ISR + WOISA from ISA/EPO Entry national/ regional phase 0 m. 12 m. 17 m. 30 m. 31 m. for EPO Chapter II at IPEA/EPO 22 m. - US application costs - PCT filing fee - Transmission fee - Int. search fee EPO - No foreign attorney - No redrafting - Reduced admin.costs - High Quality and thorough pre-exam (see IAM survey) - Largely reused by most D.O. - Results fully recognised by DO/EPO - Only if WOISA negative - Results fully recognised by EO/EPO - 1 written opinion + 1 phone call possible - Positive IPER expectable - Search/exam at EPO consistent with PCT - PPH based on EPO IPRP available - No search fee at DO/EPO - 50% discount on EPO exam fee if Chap II - Redrafting efforts limited