Using the Patent Cooperation Treaty PCT as a

Using the Patent Cooperation Treaty (PCT) as a Strategic Tool for Business Success May 20, 2009 2 nd WIPO Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment Matthew R. Bryan - Director, Patent Cooperation Treaty Legal Division, WIPO

1) What is the PCT? 2) The advantages of the PCT 3) Recent and future developments

1) What is the PCT?

Using the traditional patent system to seek international patent protection (months) 0 File application locally 12 File applications abroad Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI

• A mainly procedural international treaty facilitating certain steps in the process of obtaining patents internationally • More specifically, the PCT establishes a procedure for the filing and processing of a single application for a patent which has legal effect in the countries which are Treaty members • Simplifies the procedure for obtaining patent protection in many countries, making it more efficient and economical for: (1) users of the patent system (applicants and inventors); and (2) patent Offices

141 PCT States =PCT Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile (2 June 09) China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Nigeria Norway Oman Papua New Guinea Peru (6 June 09) Philippines Poland Portugal Republic of Korea Republic of Moldova Romania Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland St. Kitts and Nevis Sweden Switzerland Syrian Arab Republic Tajikistan 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 Yugoslavia Zambia Zimbabwe

The PCT System --typical use, in more detail (months) 0 File local application Typically a national patent application in the home country of the applicant 12 File PCT application International publication 16 18 International search report & written opinion Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

The PCT System --typical use, in more detail (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

The PCT System --typical use, in more detail (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Report on state of the art (prior art documents and their relevance) + initial patentability opinion Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

The PCT International Searching Authorities • Today: the Patent Offices of – Australia – Austria – Canada – China – Finland – Japan – Republic of Korea – Russian Federation – Spain – Sweden – United States of America – European Patent Office – Nordic Patent Institute • Soon: the Patent Offices of India and Brazil

The PCT System --typical use, in more detail Disclosing to world content of application in standardized way (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

The PCT System --typical use, in more detail (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Enter national phase 22 (optional) File demand for International preliminary examination Request an additional patentability analysis on basis of amended application 28 (optional) International preliminary report on patentability 30

The PCT System --typical use, in more detail (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Enter national phase 22 28 30 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decisionmaking

The PCT System --typical use, in more detail (months) 0 12 File local application File PCT application International publication 16 18 International search report & written opinion Express intention and take steps to pursue to grant in various states Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

General remarks on the PCT system (1) • The PCT system is a patent “filing” system, not a patent “granting” system. There is no “PCT patent” or “global patent” • The decision on granting patents is made exclusively by national or regional Offices in the national phase • Only inventions may be protected via the PCT by applying for patents, utility models and similar titles • Design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively) 10. 02. 05

General remarks on the PCT system (2) • The PCT is administered by WIPO as are other international conventions in the field of industrial property, such as the Paris Convention • PCT signed in June 1970, in Washington, D. C. , and became operational in June 1978 with 18 States

PCT Statistics

International applications received in 2008 by country of origin

WIPO’s Revenue 2008/09

(2) Why use the PCT? : its advantages

Most businesses worldwide which seek and use patents share objectives to: 1) control costs while preserving options 2) make informed business decisions 3) use the best tools available when seeking protection The PCT responds to these objectives

The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which-1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements 4. brings the world within reach 5. protects applicant from certain inadvertent errors 6. evolves to meet user needs 7. is used by the world’s major corporations, universities and research institutions when they seek international patent protection 8. allows applicants to apply securely and easily online, and to save money by doing so

1. Postpones the major costs associated with internationalizing a patent application

Traditional patent system vs. PCT system Fees for: --translations --Office fees --local agents (months) Traditional 0 12 File applications abroad Fees for: --translations --Office fees --local agents File local application International publication (months) PCT 0 File local application Enter national phase 12 16 File PCT application International search report & written opinion 18 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

PCT Costs--in perspective According to IP Global Estimator, the total cost of hypothetical application (RO/US, ISA/EP, 46 pages/12 claims w/3 independent, national phase in AU, CA, EPO, JP, MX, US, and EP validation in DE, FR, GB, IT, NL & SE, + maintenance fees--from filing until expiration of 12 national phase patents at 20 years from the filing date) would be USD $232, 742 The PCT filing fees, including the international search by the EPO, (total: USD $3, 637) represented 1. 6% of what the PCT applicant could expect to pay throughout the full life of this patent family If the payment of annual maintenance fees is eliminated from the above calculation, the total amount that the applicant would expect to pay to see his/her patents granted is reduced to USD $86, 398. PCT filing fees would then represent 4. 2% of this amount [Estimate date: July 1, 2007]

2. Provides a strong basis for patenting decisions

The PCT International Searching Authorities • The active ISAs are the following patent offices: – Australia – Austria – Canada – China – Finland – Japan – Republic of Korea – Russian Federation – Spain – Sweden – United States of America – European Patent Office – Nordic Patent Institute • Appointed but not yet acting are the Offices of India and Brazil

Example: international search report Symbols indicating which aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc. ) Documents relevant to whether or not your invention may be patentable The claim numbers in your application to which the document is relevant

Example: written opinion of the ISA Reasoning supporting the assessment Patentability assessment of claims

3. Harmonizes formal requirements PCT Applicant’s Guide, paragraph 26: “There is a prescribed form for the international application. This form must be accepted by all designated Offices for the purposes of the national phase, so that there is no need to comply with a great variety of widely differing formal requirements in the many countries in which protection may be sought. ” PCT Article 27(1): “No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and Regulations. ”

4. Brings the world within reach How? PCT application = Legal effect of a regular national patent application in all PCT States

5. protects applicants from certain inadvertent errors • invited corrections of defects & fee payments • non-competent receiving Office • double formality review • restoration of priority • missing parts • rectification of obvious mistakes • excuse of national phase entry delay

6. Evolves to meet user needs

PCT Meetings (1) MIA meeting—annual (usually first quarter) (2) PCT Working Group—annual (usually second quarter) (3) PCT Assembly—September/October (4) Conferences—for example: “PCT China”—Beijing, December 2007 “PCT Asia”—Singapore, April 2008 “PCT for the Americas”—Miami, November 2008

7. Is used by the world’s major corporations, universities and research institutions when they seek international patent protection

Top PCT Applicants (2008) 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. Huawei—CN (1737) Panasonic—JP (1729) Philips—NL (1551) Toyota—JP (1364) Bosch—DE (1273) Siemens—DE (1089) Nokia—FI (1005) LG Electronics—KR (992) Ericsson—SE (984) Fujitsu—JP (983) Qualcomm—US (907) NEC—JP (825) Sharp—JP (814) Microsoft—US (805) Motorola— US (778) BASF—DE (721) IBM—US (664) 3 M—US (663) Samsung—KR (639) Dupont—US (517) Of the top 100 companies using the PCT system in 2008, 38 were from the United States, 28 from Japan and 13 from Germany

Other PCT users Nestle (CH) Daimler Benz (DE) Shell (NL) Hitachi (JP) Volvo (SE) Elf (FR) British Telecom (GB) Novartis (CH) Colgate Palmolive (US) Ford (US) MCI (US) L’Oreal (FR) Nissan (JP) Salomon (FR) Rhone Poulenc (FR) Renault (FR) AT&T (US) Hoechst (US y DE) Honda (JP) CNRS (FR) Glaxo (GB) Kawasaki (JP) Leica (CH) MIT (US) University of Texas (US) Boeing (US) Cal. Tech (US) Mc. Donnell Douglas (US) Johns Hopkins(US) University of Michigan (US) Columbia University (US) Wisconsin Alumni Research Foundation (US) University of Florida (US) Stanford University (US)

8. apply securely and easily online, and save money by doing so

PCT Electronic filing overview 1. Prepare application body: in XML using the PCT-SAFE Editor or in PDF 2. Prepare Request using free, WIPO-produced PCTSAFE software 010101 0 101010 1 010101 Signatur 0 e 5. Receive a receipt (for online filings) 3. Electronically sign: WIPO Customer digital certificate or other 4. Transmit (on-line or on CD-R)

PCT E-filing fee reductions · 100 Swiss francs: paper filings request printout created with PCT-SAFE diskette prepared with PCT- SAFE · 100 Swiss francs: electronic filings request not in character coded format (for ex. , PDF) · 200 Swiss francs: electronic filings text of application not in character coded format (for example, PDF) · 300 Swiss francs: electronic filings text of application in character coded format (for example, XML)

(3) Recent and future developments

2009 PCT Developments • SIS (Supplementary International Search) effective January 1, 2009

The PCT System: Supplementary International Search Supplementary Search Reports established (months) 0 12 File local application File PCT application International publication 18 19 16 International search report & written opinion Request for Supplementary International Search Enter national phase 22 28 (optional) File demand for International preliminary examination (optional) International preliminary report on patentability 30

Supplementary International Search: Objectives • give applicants option to request one or more supplementary (language-based) searches from participating ISAs in addition to the main PCT search • help users by reducing likelihood of new prior art in national phase • takes into account the growing linguistic diversity in the prior art

2009 PCT Developments • SIS (Supplementary International Search) effective January 1, 2009 – First requests have been filed – 3 offices participating thus far

Supplementary International Search: Authorities • Participation of ISAs – NPI—Jan. 1, 2009 – RU—Jan. 1, 2009 – SE—Jan. 1, 2009—limitation to 1000 Supp. Searches/year – – – AT—sometime in 2009 AU—under consideration, but not as of Jan. 1, 2009 BR—not yet decided CA—no intention to offer in near future CN—under consideration EPO—planned for Jan. 1, 2010, limited ìnitially to several 100 s/year and increased if needed up to several 1000 s/year by 2013 ES—no intention FI—planned for Jan. 1, 2010 IN—unknown JPO—no intention KR—under consideration US—no intention in near future due to workload

Recent PCT developments • SIS (Supplementary International Search) effective January 1, 2009 • 1 July 2009 Rule changes – new practice on furnishing claim amendments (“complete set”) – Administrative Instruction/practice changes on sequence listings

Things we’re working on • Private file inspection – Document upload system pilot • Furnishing priority documents via digital libraries – Digital Access Service for priority documents • Email of IB notifications to applicants • PCT distance learning course • PCT webinars for the user community • New resources for PCT applicants • Multilingual terminology resources • Patent. Scope® enhancements – Full file contents will be available for IAs filed on or after 1 Jan. 2009 – National phase entry data now for 34 countries

Where to get help • For further information about the PCT, see http: //www. wipo. int/pct/en/ • For general questions about the PCT, contact the PCT Information Service at: Telephone: (+41 -22) 338 83 38 Facsimile: (+41 -22) 338 83 39 E-mail: pct. infoline@wipo. int

Patent. Scope®

Questions?