1. PCT Update 2015 Mr. Quan-Ling Sim
November 12, 2015
Mr. Quan-Ling Sim
PCT Outreach and User Relations Section

2. Outline Membership and statistical update 2014
Decisions of the PCT Assembly October 2015
ePCT
Certain PCT features and other matters
Future development of the PCT System
Information and training

3. Membership and statistical update

4. PCT Contracting States (148)

5. Countries not yet PCT Contracting States
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)

6. ISA/IPEA status (1)
Twenty one (21) Offices currently hold the status as an ISA/IPEA
Singapore started operating as an ISA, SISA, and IPEA as from 1 September 2015
Supplementary search fee: CHF 1,571
Accepted languages: English and Chinese
Scope of documentation: PCT minimum documentation, and at least the documents in English and Chinese held in its search collection

7. ISA/IPEA status (2)
The Visegrad Patent Institute (VPI) was appointed by the PCT Assembly in October 2015
Czech Republic, Hungary, Poland, Slovakia
Notional commencement date of 1 July 2016
Ukraine (appointed in 2013) not yet operational

8. PCT Applications (2014)
214,500 applications
4.5 % increase over 2013

9. Filings by country of origin (2014)
Examples of increases in certain national Offices
CN: % US: +7.1 % UK: +9 %

10. Fields of technology (2014)

11. Top PCT Applicants (2014) 1. Huawei (CN) – 3442
11. Samsung (KR) – 1381
2. Qualcomm (US) – 2409
12. Toyota (JP) – 1378
3. ZTE (CN) – 2179
13. Bosch (DE) – 1371
4. Panasonic (JP) – 1682
14. Sharp (JP) – 1227
5. Mitsubishi Electric (JP) – 1593
15. NEC (JP) – 1215
6. Intel (US) – 1539
16. LG Electronics (KR) – 1138
7. Ericsson (SE) – 1512
17. Shenzhen (CN) – 1086
8. Microsoft (US) –1460
18. Fujifilm (JP) – 1072
9. Siemens (DE) – 1399
19. United Technologies (US) – 1013
10. Philips (NL) –1391
20. Hitachi (JP) – 996

12. PCT Union Assembly October 5-14, 2015

13. Entry into force on 1 July 2016
Request by applicants to omit confidential and private information
Transmittal by the receiving Office to the International Bureau of documents supporting requests for the restoration of the right of priority
Force majeure for generalized IT failures
Languages of correspondence in ePCT to include all ten publication languages

14. Entry into force on 1 July 2017
Receiving Offices to forward earlier search and/or classification results to the ISA
Designated Offices to send timely information to the IB concerning national phase entries, national publications, and grants (Offices encouraged to comply earlier if possible)

15. Other decisions
Took note of a report on the review of the Supplementary International Search system; next review in 2020
Deferred discussion on currency “hedging” to guard against loss of income

16. ePCT for Applicants

17. ePCT (1) The global portal for managing PCT applications
ePCT private services
Full suite of functions with authenticated access
Login with WIPO user account and digital certificate
Management of secure access rights between associates
Online access to PCT applications
“Actions” to conduct PCT transactions
Web filing (ePCT-Filing) with participating receiving Offices including RO/IB

18. ePCT public services (2)
Create a WIPO User Account using the WIPO Accounts service
Documents (PDF format) can be uploaded to the IB for all PCT applications held in the IB’s electronic system – a practical alternative to fax and paper; should NOT be used for submitting documents
User Guide for Document Upload available
ion__to_epct_for_document_upload.pdf

19. ePCT private services (3)
Obtain/Upload a “supported” certificate for additional authentication
WIPO digital certificate
EPO digital certificate (smart card)
JP SECOM digital certificate
Note: USPTO digital certificates are NOT supported

20. ePCT best practices (4) Use ePCT private services
Digital certificates for authentication are available free-of-charge from WIPO
Use Actions to conduct transactions such as Rule 92bis changes, filing of Chapter II demands, Article 19 amendments, etc.
Prepare documents electronically and sign them using a text string signature, e.g., / John Smith /
Print to PDF and submit file in ePCT

21. Future developments (5)
Progressive extension of ePCT-Filing to other receiving Offices
Support alternative filing methods in ePCT-Filing, e.g., download package
Extension of online payment function to other types of fees post-filing
Template in ePCT public services for preparing requests under Rule 92bis

22. Certain PCT features and other matters

23. WIPO Pearl Launched in September 2014
Multilingual terminology portal which gives access to scientific and technical terms derived from patent documents
Available in all ten PCT languages
Helps to promote accurate and consistent use of terms across different languages and makes it easier to search and share scientific and technical knowledge
All content validated with reliability scores
Integrated with PATENTSCOPE
Further details can be found at:

24. Third Party Observations
Online system that allows third parties to submit and characterize prior art relevant to novelty and inventive step
Limited to the international phase
Length of text permitted for observations has been increased
Additional arguments may be uploaded as PDF documents, e.g., where formulae are required
Submissions possible until the expiration of 28 months from the priority date

25. Licensing
Upon request, PCT applications may be highlighted as being available for license on PATENTSCOPE
On-line action in ePCT
Form PCT/IB/382
Can be submitted at any time prior to the expiration of 30 months from the priority date
Effective means of advertising and identifying potential licensees
Free of charge

26. Supplementary International Search
Optional feature of the PCT System
Performed by a different International Authority
Useful for searches in different language collections
In some instances, can also be used to search subject matter not searched by the original International Searching Authority, e.g., methods of medical treatment
Service provided by AT, EP, FI, RU,SE, SG and XN

27. PCT-PPH
Accelerated national phase processing on the basis of a positive PCT product
Introduction of Global Patent Prosecution Highway (PPH) pilot in January 2014
Single set of qualifying requirements that simplifies the existing PPH network so that it is more accessible to users
Includes PCT work products
Links

28. PCT Direct (1) New service offered by the
EPO since 1 November 2014, and
Israel Patent Office (ILPO) since 1 April 2015
During the PCT procedure, applicants can address patentability issues raised in the search opinion established by the EPO or ILPO for the priority application

29. PCT Direct (2)
Aims at improving the efficiency and quality of the procedure before the ISA by allowing the applicant to file informal comments on the earlier search
Further details can be found on the EPO website:
journal/2014/09/a89.html
Further details can be found on the ILPO website:
T/News/Pages/PCTDirect.aspx

30. Misleading WIPO Invitations
WIPO has issued warnings regarding misleading invitations for payment of fees
Be vigilant and don’t be deceived by invitations which look similar to those issued by WIPO
Bring to the attention of WIPO and to consumer protection authorities instances of misleading invitations
Examples of such misleading invitations can be viewed on our website at the following link:

31. Arbitration and Mediation Center Fee Reductions
Independent and impartial body that offers alternative dispute resolution options for the resolution of commercial disputes between private parties (time and cost efficient alternatives to litigation)
25% lifetime reduction on AMC’s registration and administration fees where at least one party to the dispute has been named as an application or inventor in a published PCT application (no relationship to the dispute is required)
Fee calculator

32. Future developments of the PCT system

33. PCT Working Group Technical committee that meets on an annual basis
Discusses a range of policy, operational, and legal matters
Some of the work results in proposals to amend the PCT Regulations which are submitted to the PCT Assembly for decision

34. Examples of matters considered by the PCT Working Group
Agenda of May 2015 meeting
23 documents, available in the 6 official UN languages
593
Summary by the Chair:
8_25.pdf

35. Information and training

36. PCT information and training
PCT Highlights
PCT Newsletter
Learn the PCT videos
PCT Distance Learning Course in all ten PCT languages
PCT Webinars
Free updates on developments in PCT procedures
Available on request for companies or law firms
On-site PCT seminars and training sessions
Annual advanced PCT seminar at WIPO in October

37. Need more information? PCT Resources http://www.wipo.int/pct/en/
PCT Information Service
Telephone: (+41-22)
Facsimile: (+41-22)

38. Recording and Survey
Today’s webinar and slides will be available for download from the PCT webinar page over the next few days:
Survey on today’s webinar presentation