1. PCT Direct Current program and extension for non-European applicants
Alfred Spigarelli
Director Patent Procedures Management
June 2015

2. Usual strategy for extending patent protection
When for an invention patent protection is sought in one or more Offices over the domestic office (e.g. USPTO), then the PCT route is probably the best choice.
In most cases the first step is to apply first for a national patent
Costs: National filing and search fees + National attorney and corresponding internal administration costs
The second step is to file a PCT application claiming priority of the National 1st filing. Several options are available some requiring upfront decisions and others where decisions can be postponed, for example:
Option: RO/USPTO and ISA/EPO if protection in Europe is considered
Costs: PCT filing fee + Chap I search fee at EPO + National attorney cost and corresponding administration costs
Administration costs minimized as both US and PCT application filed at USPTO
Attorneys cost can be minimized as well by using from beginning appropriate drafting standards

3. Cost effectiveness of the PCT Route with EPO ISA
PCT route v. Paris route:
provides the maximum flexibility and postpone to 30 months after priority the choice of where patent protection is necessary
is not necessarily more expensive (even upfront):
if protection in Europe is sought than the additional cost is:
(PCT - EP filing fees) + (PCT – EP search fee)
all other costs for protection beyond own country and Europe postponed to after 30 months
Cost effective because:
Internal administration costs reduced (National patent office also RO)
No representative abroad necessary until 30 months
Not necessary to redraft application if drafted from the beginning for the PCT route (drafting can be optimised latter for national prosecution)
No additional search fee at EPO latter with direct entry into examination
Discounts available in most designated offices with ISR and WOISA form EPO

4. Example PCT Route with RO/US and EPO/ISA
1st filing at USPTO
0 m.
- US application costs
- PCT filing fee
- Transmission fee
- Int. search fee EPO
- No foreign attorney
- No redrafting
- Reduced admin .costs
PCT filing under US priority at RO/US
12 m.
- High Quality and thorough pre-exam (see IAM survey)
- Largely reused by most D.O.
- Results fully recognised by DO/EPO
ISR + WOISA from ISA/EPO
17 m.
- Only if WOISA negative
- Results fully recognised by EO/EPO
- 1 written opinion + 1 phone call possible
- Positive IPER expectable
Chapter II at IPEA/EPO
22 m.
Entry national/ regional phase
- 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
30 m.
31 m. for EPO

5. New strategy for new opportunities
PPH benefits for applicants:
More and more PPH agreements including with EPO
PCT is nowadays a well recognised basis for PPH requests (e.g. IP5 PPH)
PPH enhances legal certainty and reduces costs
PPH best reply to offices backlogs
PCT PPH very cost effective (substantial internal and counsel costs saving)
However PPH requires for being effective:
A fully or at least substantially positive WOISA
ISR and WOISA with recognized high quality
Timely ISR and WOISA

6. EPO secures and enhances PCT and PPH benefits
EPO offers added value through:
Acknowledged high quality (IAM: EPO again rated top quality office)
Timeliness (With ECfS 80% ISR available at 17 months, 2015 target close to 100%)
Support to applicants (Invitations to clarify before search, NU protest procedure, complaints handling....)
Fully integrated patent procedures under PCT and EPC (same examiner applying similar standards, WOISA de facto 1st examination communication at DO/EPO)
PCT Direct: linking together 1st filing and subsequent PCT procedure

7. PCT Direct: Linking PCT and 1st filings in Europe
Since November 2014:
Applicants filing a PCT application with ISA/EPO and claiming priority from a 1st EP filing (or 1st national filing searched by EPO), can:
Reply to the 1st 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 overview EP 1st filing Nat. 1st Filing 0 m EPO SR + SO 6 m
PCT application + reply to SO
12 m
ISR + WOISA
17 m
WOISA positive? NO
YES
Entry Reg. And Nat. Phase with PPH
PCT Chap II
30-31 m
Euro-PCT high priority direct grant
Applicant should use RO/EP
ISR and WOISA based on reply 1st to earlier search opinion
37 m

9. Main benefits of PCT Direct
Complies with EPC and PCT
Very cost/resources efficient for the applicant
PCT Chapter I more often concluded with a positive WOISA
for the most difficult cases, PCT Chapter II provides additional opportunities to obtain a positive IPER
Results in direct grants with high priority level at DO/EPO
Powerful leverage for extending IP rights outside Europe
Combination with PCT-PPH particularly effective for getting fast and easy grant at the EPO and outside Europe without any additional fast-track fee, in particular in the USA
Consistent with Early Certainty from Search approach (focus on search with high priority on direct grants)

10. Current potential users
Applicable to situations where EPO has searched the 1st filing, i.e. PCT or EP 1st filings and some European national applications (FR, NL, BE, GR, LU, TU...)
Currently only usable for applicants opting for RO/EPO and starting with a first filing in Europe
Possible extension to non-European applicants (such as US or JP) when PCT Direct can be claimed from all Receiving Office

11. Current Usage and feedback
Users feedback very supportive
in 2014: 13% of the pairs (EP 1st filing + EPO/ISA) used PCT-Direct (while PCT Direct only 2 months operational and limited to EPO/RO)
in 2015: about 200 PCT Direct requests per months (with current restrictions which will be dropped soon)
Feedback welcome, in particular for assessing the benefits of using the concept
March figure not complete

12. Possible extensions Currently PCT Direct is limited to EPO/RO
Will be extended to other Receiving Offices as from 1st July 2015
WIPO supported the concept and adapted forms to make it easier for an applicant to request PCT Direct at the EPO from any RO
Extension of PCT direct to non-European applicants:
The extension of PCT Direct to all RO will enable applicants whose 1st applications are not filed in Europe to benefit from the PCT Direct program, in particular for US and Japanese applicants,
How can it work for a non-European applicant (e.g. an US applicant)?
by filing a 1st PCT application at RO/USPTO with ISA/EPO, and
by filing a 2nd PCT application claiming priority from the first one with again ISA/EPO and requesting PCT Direct treatment at EPO

13. PCT-Direct extension to non-European
PCT 1st filing e.g. at RO/USPTO
0 m
EPO ISA
< 3 m
Priority
claim
EPO ISR + WOISA on 1st PCT
6 m
PCT 2nd filing + reply to WOISA on 1st filing at RO/USPTO with ISA/EPO
< 12 m
ISR + WOISA on 2nd PCT
17 m
WOISA positive?
Entry Reg. And Nat. Phase with PPH NO
YES
PCT Chap II
30-31 m
Euro-PCT high priority direct grant
37 m 13

14. Difference with PCT Direct as now:
PCT application must claim priority from a first PCT filing at any RO and searched by ISA/EPO
As 1st and 2nd PCT applications searched by ISA/EPO, Int. search fee for 2nd PCT refunded in toto (unless major shift in substance)
Only possible when WIPO will have formally integrated PCT Direct as a PCT filing option: expected on 1st July 2015
Enabling to claim PCT Direct at EPO from any RO make it possible to start PCT Direct without a 1st filing in Europe
This extension of PCT Direct is currently investigated and more detailed communication will take place when operational.

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16. Thank you for your attention