PCT developments. U.S. Bar-EPO Partnership for Quality meeting

Transcription

1 PCT developments U.S. Bar-EPO Partnership for Quality meeting Niclas Morey, John Beatty 12 May 2015

2 Topics Lifting of EPO limitation in business methods PCT developments - address for correspondence PCT developments - automatic debiting of PCT fees (ADA) The EPO as PCT Authority The EPO as International Searching Authority The EPO as International Preliminary Examining Authority Filing scenarios for US users Provision of search strategies of EP and PCT work update PCT Direct European Patent Office 2

3 Lifting of EPO limitation in business methods EPO limited its competence in respect of international applications filed by a national or resident of the USA in the fields of biotechnology or business methods in 2002, and in the field of telecommunication for international preliminary examination (PCT Chapter II) due to its workload The limitations in the field of biotechnology and telecommunication were lifted on 1 January 2004 The last of the so-called limitations of competence, by which the EPO declined to handle US-originating applications for business methods, was abolished on 1 January 2015 European Patent Office 3

4 Lifting of EPO limitation in business methods Applications containing claims relating solely to pure business methods stripped from any technical aspect - still not searched by the EPO in view of their exclusion from patentability no change in legislation or examination practice with regard to the exclusion from patentability of business methods as such (Article 52(2) EPC) Reason: situation has considerably changed in view of recent developments in US case law (e.g. Bilski v. Kappos and Alice Corp. v. CLS Bank) reducing the number of applications of US origin containing pure business methods EPO guarantees equal treatment European Patent Office 4

5 PCT developments - Address for correspondence (AfC) and automatic debiting of PCT fees (ADA) AfC new practice since 1 November 2014 Notice: OJ EPO 2014, A99 International phase: When applicant (natural / legal person) is represented by an agent all communications sent to agent (=professional representative) When not represented by agent applicant may indicate as AfC any address (worldwide), which might be address of any different natural/legal person increased flexibility for EPO s PCT applicants European phase: When application enters the European phase - different practice: If an AfC is indicated, it has to be in an EPC Contracting State and the applicant's own address (e.g. sub-division within a firm) European Patent Office 5

6 PCT developments - Address for correspondence (AfC) and automatic debiting of PCT fees (ADD) Arrangement for deposit accounts (ADA) revised on 1 April 2015 NEW: automatic debiting of PCT fees available at the EPO (all PCT fees except fees for Suppl. International Search, since payable to IB of WIPO) previously, only direct debiting possible alignment with possibility to automatically debit fees in the Euro-direct procedure (equal service levels) Notice: supplementary publication 3 OJ EPO 2015 European Patent Office 6

7 The EPO as PCT Authority EPO ranks 1 st as International Searching Authority (ISA) with ISRs established (about 40% of worldwide number), 1 st as International Preliminary Examining Authority (IPEA) with almost IPERs (about 55%), and 3rd as Receiving Office with PCT applications (15.4% of all PCT applications filed) Safety nets available at RO/EP (e.g. restoration of the priority right within 2 months from the date on which the priority period expired, incorporation by ref. of missing parts of the description, claims or drawings, both since 2007) European Patent Office 7

8 The EPO as PCT Authority Improved timeliness and efficient processing if international application already filed with EPO as receiving Office (possible for US applicants via a European subsidiary) Online filing tools: web-based: New online filing (CMS), epct (both since 2014) Software-based: eolf PCT Direct since 1 November 2014 European Patent Office 8

9 The EPO as International Searching Authority In 2014, the EPO had a market share amongst ISAs of nearly 40% 12% Share of respective ISAs, in percentage of ISRs drawn up 14.3% 9.7% 6.7% 19% Figures: WIPO s statistics on the PCT system [2014], % EPO JPO KIPO SIPO Others... because we are renowned internationally for our top quality searches: Highly-skilled, multilingual examiners working in teams of three using state-of-the-art databases including patent documents from over 100 countries. Same quality standards applied as for European search performed under the EPC, delivered for timely publication at 18 months. Continuous improvement of our documentation coverage, taking ever more Asian documentation into account. Informative written opinions issued in addition to the international search report, which have proven to be an excellent basis for PCT-PPH requests in the USA, Japan, Korea and China. Cost-efficiency: When entering the European phase, we do not establish and charge applicants for a supplementary search report full re-use of PCT work in the European phase. European Patent Office 9

10 The EPO as International Preliminary Examining Authority In 2014, the EPO established almost international preliminary examination reports, which constitutes 55.7% of the total worldwide. What the EPO offers as IPEA: Top quality preliminary opinions regarding patentability, encouraging full dialogue between the applicant and the examiner in charge. Top-up search for prior art that became available in the time period between the international search and the international preliminary examination (since 1 April 2014). Solid basis for the applicant to assess the chances for patent protection across the world and to decide whether or not to proceed with the application into the European phase. Good basis for accelerating the processing of the application in the USA, Japan, Korea and China under the PCT-PPH scheme. 50% reduction of the fee for the examination performed during the European phase re-use of PCT work in the European phase. European Patent Office 10

11 Filing Scenarios (including costs EP regional phase) 1. Euro-Direct Filing 2a. PCT Application (RO & ISA = ) 2b. PCT Application (RO & ISA & IPEA = ) 2c. PCT Application (RO & ISA =, SISA = EPO) 2d. PCT Application (RO =, ISA = KIPO) 2e. PCT Application (RO =, ISA & IPEA = KIPO) 3a. PCT Application (RO = EPO or, ISA = EPO) 3b. PCT Application (RO = EPO or, ISA & IPEA = EPO) 4a. PCT-Direct (RO & ISA = EPO) 4b. PCT-Direct (RO & ISA & IPEA = EPO) Fees as of Applications of less than 30 pages Applications of no more than 15 claims Currencies as converted on and Converted currencies rounded to the nearest one PCT-Direct scenarios (4a+4b) are calculated with 1 to 1 correspondence (100% fee reduction) European Patent Office 11

12 Scenario 1: Euro-Direct Filing Online filing fee: 120 Search fee: Designation fee: 580 Examination fee: Total: European Procedure Total European Patent Office 12

13 Scenario 2a: PCT Application (Chapter I) RO: ISA: International phase Online filing fee: $ Int. Search fee: $ Transmittal fee: $ 240 Subtotal : European phase Online filing fee: 120 Suppl. Eur. Search: 1 095* Designation fee: 580 Examination fee: 1 620** Subtotal: * Reduced as =ISA **Lower fee International Phase European Phase Total European Patent Office 13

14 Scenario 2b: PCT Application (Chapter II) RO: ISA: IPEA: International phase Online filing fee: $ Int. Search fee: $ IPE and handling fee $ 808 Transmittal fee: $ 240 Subtotal : European phase Online filing fee: 120 Suppl. Eur. Search: 1 095* Designation fee: 580 Examination fee: 1 620** Subtotal: * Reduced as =ISA **Lower fee International Phase European Phase Total European Patent Office 14

15 Scenario 2c: PCT Application (SIS) RO: ISA: SISA: EPO International phase Online filing fee: $ Int. Search fee: $ SIS and handling fee: $ Transmittal fee: $ 240 Subtotal : European phase Online filing fee: 120 Designation fee: 580 Examination fee: Subtotal: * International Phase European Phase Total European Patent Office 15

16 Scenario 2d: PCT Application (Chapter I) RO: ISA: KIPO International phase Online filing fee: CHF Int. Search fee*: Transmittal fee: Subtotal : * Application in English European phase Online filing fee: 120 Suppl. Eur. Search: 1 095* Designation fee: 580 Examination fee: 1 620** Subtotal: * Reduced as KIPO=ISA **Lower fee International Phase European Phase Total European Patent Office 16

17 Scenario 2e: PCT Application (Chapter II) RO: ISA: IPEA: KIPO KIPO International phase Online filing fee: CHF Int. Search fee*: IPE and handling fee Transmittal fee: Subtotal : * Application in English European phase Online filing fee: 120 Suppl. Eur. Search: 1 095* Designation fee: 580 Examination fee: 1 620** Subtotal: * Reduced as KIPO=ISA **Lower fee International Phase European Phase Total European Patent Office 17

18 Scenario 3a: PCT Application (Chapter I) RO: ISA: EPO International phase Online filing fee: $ Transmittal fee: $ 240 Int. search fee: Subtotal : European phase Online filing fee: 120 Designation fee: 580 Examination fee: Subtotal: International Phase European Phase Total European Patent Office 18

19 Scenario 3b: PCT Application (Chapter II) RO: ISA: IPEA: EPO EPO International phase Online filing fee: $ Transmittal fee: $ 240 Int. search fee: IPE and handling fee: Subtotal : European phase Online filing fee: 120 Designation fee: 580 Examination fee: * Subtotal: * Reduced by 50% as EPO is IPEA International Phase European Phase Total European Patent Office 19

20 Scenario 4a: PCT-Direct (Chapter I) Priority: EPO RO: EPO ISA: EPO Priority application (EP) International phase European phase Online filing fee: 120 Search fee: Subtotal : Online filing fee: 986 Int. search fee: 0* Transmittal fee: 130 Subtotal : Online filing fee: 120 Designation fee: 580 Examination fee: Subtotal : Priority Application * Refund of international search fee ( doublure ) International Phase European Phase Total European Patent Office 20

21 Scenario 4b: PCT-Direct (Chapter II) Priority: EPO RO: EPO ISA: EPO IPEA: EPO Priority application (EP) International phase European phase Online filing fee: 120 Search fee: Subtotal : Online filing fee: 986 Int. search fee: 0* IPE + handl. fee: Transmittal fee: 130 Subtotal : Online filing fee: 120 Designation fee: 580 Exam. fee: 902.5* Subtotal : Priority Application * Refund of international search fee ( doublure ) * Reduced by 50% as EPO is IPEA International Phase European Phase Total European Patent Office 21

22 Overview of Filing Scenarios PCT Scenarios International phase (including PCT- Direct in 4a and 4b) European phase Total Total in $ (as at ) 1 Euro direct $ a RO&ISA= $ b RO&ISA&IPEA= 2c RO&ISA= SISA=EPO 2d RO= ISA=KIPO 2e RO=, ISA&IPEA= KIPO 3a RO= EPO or ISA=EPO 3b RO=EPO or ISA&IPEA=EPO $ $ $ $ $ $ a RO&ISA=EPO $ b RO&ISA&IPEA=EPO $ European Patent Office 22

23 Provision of search strategies of EP and PCT work - update Discussions at the PCT MIA meeting in Tokyo, February 2015 EPO approach: sharing of information on I. search strategy databases, II. III. classification symbols, and keywords Information automatically extractable from search history inclusion in a sheet separate from but formally part of the international search report PCT Authorities free to provide more information, if wished European Patent Office 23

24 PCT Direct overview EP 1st filing Nat. 1st Filing * 0 m EPO SR + SO 6 m PCT appl. + reply to SO (PCT Direct letter) 12 m ISR + WOISA 17 m PCT Chap II NO (?) WOISA positive? YES Entry Reg. And Nat. Phase (possibly with PPH request) m * for Offices where EPO does the search (BE, CY, FR, GR, IT, LT, LU, MT, NL, SM,TR) Applicant should use RO/EP (ext. to all ROs on 1 July 2015) ISR and WOISA based on reply 1 st to earlier search opinion Euro-PCT high priority direct grant 37 m European Patent Office 24

25 PCT Direct - Main benefits Goal: To make maximum use of national phase work in the PCT international phase, thereby saving costs and time for applicants. + high likelihood for direct grant when entering the European phase Complies with EPC and PCT PCT Chapter I will be more often concluded with a positive WOISA for the most difficult cases, PCT Chapter II provides sufficient opportunities for getting a positive IPER Powerful leverage for extending IP rights outside Europe Combination with PCT-PPH particularly powerful for getting fast and easy outside Europe without additional fast-track fee, in particular in the US Consistent with early Certainty from Search (ECfS) approach (focus on search with high priority on direct grants) European Patent Office 25

26 PCT Direct - questions 1. Are you using PCT Direct via sister companies in Europe? 2. Would you consider extending the PCT Direct service to applications that have been searched by the EPO as Office of second filing based on a first filing from the US? European Patent Office 26