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Patent Cooperation Treaty (PCT): latest developments

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1 Patent Cooperation Treaty (PCT): latest developments
WIPO studies: 2013 Global Innovation Index 2011 World Intellectual Property Report: the Changing Face of Innovation Matthew Bryan, Director, PCT Legal Division, WIPO August 2013

2 PCT Coverage Today

3 148 PCT States =PCT 3 Costa Rica Côte d'Ivoire Croatia Cuba Cyprus
Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Panama Papua New Guinea Peru Philippines Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Guinea-Bissau Honduras Hungary Iceland India Indonesia Iran (Islamic Republic of) (4 Oct. 2013) Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar St. Kitts and Nevis Sweden Switzerland Syrian Arab Republic Tajikistan Thailand The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uzbekistan Viet Nam Zambia Zimbabwe Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Rwanda Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Saudi Arabia (3 Aug. 2013) Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland 3

4 Countries not yet in PCT
Afghanistan Andorra Argentina Bahamas Bangladesh Bhutan Bolivia Burundi Cambodia Cape Verde Democratic Republic of Congo Djibouti Eritrea Ethiopia Fiji Guyana Haiti Iraq Jamaica Jordan Kiribati Kuwait Lebanon Maldives Marshall Islands Mauritius Micronesia Myanmar Nauru Nepal Pakistan Palau Paraguay Samoa Solomon Islands Somalia South Sudan Suriname Timor-Leste Tonga Tuvalu Uruguay Vanuatu Venezuela Yemen (45)

5 PCT Applications 2012 194,400 PCT applications +6.6% in 2012
NL: +14% CN: +13.6% KR: +13.4% FI: +13.2% JP: +12.3% 194,400 PCT applications +6.6% in 2012 87.3% fully electronic Forecasting +3.8% in 2013

6 International applications received in 2012 by country of origin
Top 15 countries responsible for 92.7% of IAs filed in 2012

7 PCT National phase entries—total
507,400 national phase entries estimated in 2011 (+ 4.2%) 431,800 (about 85%) of NPEs are from non-resident applicants, making PCT NPEs responsible for 54.9% of all non-resident patent applications filed worldwide in 2011

8 PCT National phase entries 2011—by target DO
USPTO most preferred DO for National Phase Entries; had highest growth among the IP5 Offices (+7.3%) Brazil (+12.6%) and India (+9.8%) had highest growth rates among top 10 Offices

9 Top PCT Applicants 2012 ZTE Corporation—CN (3906)* Panasonic—JP (2951)
Sharp—JP (2001) Huawei—CN (1801) Bosch—DE (1775) Toyota—JP (1652) Qualcomm—US (1305) Siemens—DE (1272) Philips—NL (1230) Ericsson—SE (1197) LG Electronics—KR (1094) Mitsubishi Electric—JP (1042) NEC—JP (999) Fujifilm Corporation (891) Hitachi—JP (745) Samsung Electronics—KR (683) Fujitsu—JP (671) Nokia—FI (670) BASF—DE (644) Intel—US (640) *Almost 18 IAs/working day () of published PCT applications

10 Top University PCT Applicants 2012
University of California (US) MIT (US) Harvard University (US) Johns Hopkins (US) Columbia University (US) University of Texas (US) Seoul National University (KR) Leland Stanford University (US) Peking University (CN) University of Florida (US) Cal Tech (US) Korea Advanced Institute of Science and Technology (KR) Cornell University (US) University of Tokyo (JP) Yonsei University (KR) Isis Innovation Limited (GB) Tsinghua University (CN) Kyoto University (JP) University of Michigan (US) Purdue University (US)

11 Recent PCT developments
America Invents Act (AIA) Simplification for PCT 3rd Party Observation system Indication of availability for license ePCT

12 ePCT: future improvements (1)
Web-based electronic filing of new PCT applications Currently in pilot with RO/IB Aiming at Q3/2013 for opening up for RO/IB filing Aiming to have even better validations than PCT-SAFE Aiming for fully hosted RO service by end 2014 Further online actions Prepare and submit Chapter II Demand online Request to indicate availability for licensing, etc. Multilingual interface (eventually 10 languages) Extension of ePCT to interested Offices in their various capacities (RO, ISA, SISA, IPEA, DO, EO) has started, including hosting on behalf of offices, and 2-way communication

13 ePCT: future improvements (2)
Offer centralized real-time credit card transactions for all fee types and all authorities National phase entry function could be added to ePCT Opt-in for DOs Applicant would select from among participating DOs, upload any necessary documents and add any bib. data not already available to IB Local counsel could be fully involved Would not initially include fee payment facility, but this could be added in the future Positive reaction at Feb IP5 meeting

14 Recent PCT developments
America Invents Act (AIA) Simplification for PCT 3rd Party Observation system Indication of availability for license ePCT WIPO AMC fee reduction for PCT users Misleading invitations




18 Recent PCT developments
America Invents Act (AIA) Simplification for PCT 3rd Party Observation system Indication of availability for license ePCT PCT-PPH WIPO AMC fee reduction for PCT users Misleading invitations PCT Working Group 2013

19 PCT Working Group May 21-24 (1)
USPTO/UK--Mandatory response to negative comments in the national phase (PCT/WG/6/16) USPTO/UK-- Formal integration of PPH into PCT (PCT/WG/6/17) USPTO/UK-- Mandatory top-up search in Ch. II (PCT/WG/6/18) USPTO/UK-- Mandatory recordation of search strategies (PCT/WG/6/19) Other USPTO/UK “20/20” proposals: Self-service Rule 92bis changes and priority claim corrections Limited Chapter I corrections to claims Simplified withdrawal without signatures within limited period Formally integrate collaborative search into PCT Incorporate Global Dossier into PCT Availability of Written Opinion of ISA as of publication date (PCT/WG/6/13) Requirements and procedures of appointment of International Authorities (PCT/WG/6/4) PCT Fee Reductions (PCT/WG/6/10) Restoration of the Right of Priority (PCT/WG/6/12) Evaluation Report of 2nd Collaborative Search/Exam pilot (PCT/WG/6/22)

20 PCT Working Group May 21-24 (2)
PCT Minimum Documentation (PCT/WG/6/9) PCT Sequence Listing Standard (PCT/WG/6/7) Revision of WIPO Standard ST.14 (PCT/WG/6/8) Updates: Supplementary International Search 3rd party observations ePCT Quality (PCT/MIA/20/3) Report from the Quality Subgroup Matters Arising from Report from the Quality Subgroup Future Quality-Related Work

21 PCT Working Group May 21-24: Outcomes
2 sets of amendments forwarded to PCT Assembly Amend PCT Rules 66 and 70 to require IPEAs to conduct top-up searches during IPE Delete PCT Rule 44ter and amend PCT Rule 94 to make WO/ISA available to the public via PATENTSCOPE at international publication If approved by PCT Assembly in October, these amendments to the PCT Regulations will enter into force July 1, 2014, for demands for IPE filed on or after that date, and for applications filed on or after that date, respectively Many of the proposals discussed will be revised for further discussion next year

22 Future PCT developments
Further work on all remaining WG proposals: Fee reductions Appointment of ISAs/IPEAs US/UK 20/20 proposals Etc. Collaborative search

23 Collaborative PCT Search
WIPO’s position: collaborative search should be part of the future of the PCT PCT past discussions PCT Collaborative Search (and Examination) were important elements of initial “PCT Roadmap” proposal presented at the 2009 PCT WG Most recent status reports at 2012 PCT MIA (PCT/MIA/19/4) and 2012 PCT WG (PCT/WG/5/9) 2nd IP5 pilot—preliminary views of EPO (as example) In 87% of cases, feedback from USPTO and KIPO examiners resulted in addition of citations to ISR, and in 27% resulted in amendments to WO-ISA In 92% of cases, lead examiner (EPO) perceived the final products (ISR and WO-ISA) 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 (e.g., medical use, method of treatment, etc.) 23

24 PCT training options PCT Distance learning course content available in the 10 PCT publication languages PCT Webinars providing free updates on developments in PCT procedures upon request also for companies or law firms Video- and teleconferences In-person PCT Seminars and training sessions

25 PCT Resources/Information
For further information about the PCT, see For general questions about the PCT, contact the PCT Information Service at: Telephone: (+41-22) Facsimile: (+41-22)

26 WIPO Studies WIPO strategic goal: “World reference for IP Information and Analysis” WIPO Chief Economist’s office issuing interesting and important IP-related studies 2 Examples: 2013 Global Innovation Index 2011 World Intellectual Property Report: “The Changing Face of Innovation”


28 Overview Unlike primary resources, capacity to innovate can be acquired GII 2013 ranks innovation performance of 142 countries, representing 95% of the world’s population and 99% of the world’s GDP—global reference/action tool on innovation for researchers, and public/private decision makers As a benchmark for policy makers, GII helps identify targeted policies, good practices, and other levers to foster innovation, with country profiles indicating areas of strengths and weaknesses UN Secretary-General Ban Ki-moon, at launch of 2013 report, said that innovation is “at the heart of addressing the interlinked challenges of global development,” citing reliance on traditional biomass energy sources, high rates of youth unemployment, and challenges of food security as evidence of the clear need for innovation

29 GII: multi-stakeholder effort
Co-published by Cornell University, INSEAD and WIPO Four Knowledge Partners: Booz & Company, the Confederation of Indian Industry, du, and Huawei Independent statistical audit by the Joint Research Centre of the European Commission International advisory board

30 A tool for action around 84 metrics

31 GII GII 2013 rankings – Top 10 Efficiency Ratio Output Sub-Index
Singapore Hong Kong (China) United States of America United Kingdom Sweden Finland Switzerland Denmark Canada Netherlands Malta Luxembourg Iceland Israel Germany Input Sub-Index Output Sub-Index Mali Moldova, Rep. Guinea Swaziland Indonesia Nigeria Kuwait Costa Rica Venezuela, Bolivarian Rep. Ireland Efficiency Ratio GII


33 Australia in GII 2013 #19 overall (between KR and FR), up 4 places from 2012, in the group of “Leaders” Examples of Strengths: 9th: Rule of Law 9th: Assessment in reading, math and science 4th: Ease of getting credit 3rd: Ease of starting a business 2nd: School life expectancy, years 7th: Research and development 5th: QS University ranking 3rd: Knowledge workers 7th: Knowledge-intensive employment, % 9th: Online creativity Examples of Weaknesses: 77th: Communications, computer & info services exports 74th: R&D financed by abroad 74th: Communications, computer & info services imports

34 GII 2013 – some key mesages Innovation is a global game
Innovation is a mindset Requires identification and mobilization of multiple resources and engagement of many stakeholders Innovation divide persists, though room for cautious optimism as some economies are demonstrably learning and rapidly improving their innovation capabilities Local dynamics of innovation are critically important Metrics are useful Provide commonly accepted tool to monitor/identify priorities Core ingredient in innovation is talent Even more important than investment, research and cooperation


36 R&D expenditure is growing
Source: WIPO estimates, based on data from UNESCO Institute for Statistics, Eurostat and OECD, September 2011

37 Demand for IP rights has grown
Source: WIPO Statistics Database, October 2011

38 Sound patent institutions are crucial
Patent institutions perform the essential tasks of ensuring the quality of patents granted providing balanced dispute resolution Unprecedented level of patenting has put these institutions under considerable pressure In 2010, there were an estimated 5.17 million of unprocessed patent applications

39 Knowledge markets based on IP rights are on the rise, though still nascent
Source: WIPO based on data in Athreye and Young (2011)

40 University and PRO patenting is on the rise
Source: WIPO Statistics Database, June 2011

41 Patents can facilitate specialization and learning
Studies have shown that patent-based knowledge markets enable firms to specialize, allowing them to be more innovative and efficient at the same time Patents allow firms to control which knowledge to guard and which to share so as to maximize learning – a key element of open innovation strategies Online availability of patent documents has created new catch-up opportunities for technologically less developed economies

42 Public policies have encouraged the commercialization of scientific knowledge
Public-private knowledge exchanges occur through a number of channels Almost all high-income countries have institutional frameworks to incentivize commercialization Patenting by universities and public research organizations (PROs) and subsequent commercial development of their inventions through technology transfer offices (TTOs) Several low- and middle-income countries have pursued similar policies

43 Examples of additional findings
Geography of innovation has shifted/is shifting, although high-income countries still dominate global R&D spending Innovation process is increasingly international in nature Innovation appears to have become more collaborative and open, which can benefit firms and society IP ownership has become even more central to business strategies Patent portfolio races complicate cumulative innovation processes Innovators and IP owners are experimenting with new IP policies and practices, such as defensive publication, IP donations, collaboration with universities and patent pools

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