Patent Cooperation Treaty (PCT): Latest Trends & Strategies for Applicants Lisa Bannapradist Director, Search Services Cardinal Intellectual Property 1603 Orrington Avenue, 20th Floor Evanston, IL 60201 Phone: 847.905.7122 Fax: 847.905.7123 Email: mail@cardinal-ip.com
Outline Learn about the latest PCT filing trends Strategies for selecting an international searching authority The future of the PCT system and the IP5 Questions 2
2016 Record year for PCT application filings 3
2016 s Top Receiving Offices Top 15 receiving offices account for 96% of all PCT applications filed U.S. received more applications than any other office 4
Filing Trends for the Top 5 Receiving Offices U.S. largest filer since PCT s 1978 start Only of top 5 with 2 years of negative growth = -0.9% in 2016; -7.1% in 2015 China = double digit growth rates since 2002 China will over take U.S. within the next 2 years to become largest user of PCT system (if current trends continue) 5
Shift Toward Asia Due to growth in filings from China, Japan and Korea Asia will account for half of all PCT filings within the next 2 years 6
Subject Matter Trends = Digital Communication Largest share of Total PCT applications Top 3 category of most Top 10 PCT Applicants (see aqua) 7
Published Language 8
ISA Choices for PCTs filed with the U.S. RO Applicant must choose an ISA upon filing the PCT application Competent ISAs: USPTO United States EPO - Europe KIPO - Korea IPAU - Australia ILPO - Israel Rospatent - Russian Federation JPO Japan IPOS - Singapore Not listed: SIPO - China 9
ISA Search Costs ISA Search Fee in U.S. Dollars Effective 09/01/2017 Regular Small Entity Micro Entity USPTO U.S. $2080 $1040 $520 EPO Europe $2099 $2099 $2099 KIPO Korea $1114 $1114 $1114 IPAU Australia $1688 $1688 $1688 ILPO Israel $963 $963 $963 Rospatent Russian Fed $482 $482 $482 JPO Japan $1372 $1372 $1372 IPOS Singapore $1552 $1552 $1552 EPO - consistently highest up front costs Rospatent - consistently lowest up front costs US - for small entities and micro entities
USPTO as ISA Beneficial for small entities and micro entities Small entity = (a) nonprofit org; (b) <500 employee business; (c) university; OR (d) individual inventor Micro entity = [(a) small entity; (b) not inventor on > 4 prior patent apps; (c) limited gross income; AND (d) not granted interest in invention to an entity that does not meet gross income limits]; OR related to a US institution of higher education May eliminate U.S. national stage fees for both search and examination Where the written opinion prepared by ISA/US or international preliminary examination report prepared by IPEA/US indicates that all claims satisfy the provisions of PCT Article 33(1) - (4) Savings on international phase preliminary exam fee if USPTO is ISA Subject matter expertise (e.g., business methods) Compare to EPO: Prior to 2015, EPO would not carry out an international search for any application which contained one or more claims relating to the field of business methods More forgiving of multiple independent claims Not as strict on lack of unity 11
EPO as ISA High up front costs USPTO consistent at $2080 for large entity (since at least 2009) EPO cost varies but usually higher: $2426 on 06/12; $2366 on 01/15; $2099 now International phase preliminary examination fee is the same no matter if EPO was ISA Subject matter limitations Prior to 2015: NO search if one or more claims related to business methods Since 2015: Yes on technical arts = business methods that also contain technical features No on non- technical arts = mere business methods (e.g., software) whenever an application relates only to a business method as such Can refuse to examine, or otherwise examine but simply exclude subject matter Strict with unity of invention May require payment of additional search fees; Can cost more over time $2080 for large entity; $1040 for small entity; $520 for micro entity If extra fees not timely paid, this can restrict amendments later on in the European phase to only the subject matter that has been searched Easing passage through EPO prosecution 12
KIPO as ISA Lowest up front search cost of the Top 5 Timeliness of search Faster than US, EPO, Russian Federation Slower than JPO Language differences May search in Korean, English and Japanese Less capability for European languages Lack of experience Deemed competent ISA only since 01/01/2006 Allowance rates on 102/103 grounds
JPO as ISA Timeliness of search, fastest of Top 5 Restricted use; 4 requirements must be met: (1) the international applications are submitted in English (2) the claims of the international applications are directed to the field of green technology as defined by certain IPC classes (see Official Notices (PCT Gazette) dated 25 June 2015, pages 108 et seq.); (3) the JPO has not received more than 5,000 international applications from the USPTO during the three year period from 1 July 2015 to 30 June 2018, not more than 300 applications per quarter during the first year, and not more than 475 applications per quarter during the second and third years; AND (4) the JPO is chosen as a competent authority by Applicant
Other ISAs IPAU Australia Not part of Top 5 Restricted Use IP Australia will not act as an ISA if it has received more than 250 international applications from the USPTO during a fiscal quarter, as indicated in the Official Gazette at 1409 OG 302 on December 30, 2014. 15
Other ISAs Continued Rospatent / Russian Federation Not part of Top 5 Lowest up front cost of all ISAs Level of quality ILPO / Israel Restricted Use The ILPO will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification 16
Subject Matter Trends per Country
What is the IP5? USPTO, EPO, JPO, KIPO, SIPO The Five IP Offices (IP5) = The 5 largest intellectual property offices in the world Goals: Global co-operation Improve efficiency of the examination process for patents worldwide Eliminate duplicative work Enhance quality and guarantee the stability of patent right The IP5 accounts for 90% of all patent applications filed worldwide 93% of all work carried out under the Patent Cooperation Treaty (PCT).
IP5 and Subject Matter Categories Historical numbers of grants broken down by IPC codes Counts of numbers of grants with breakdowns by IPC classes (3 digits) and country of origin. SIPO data are broken down by IPC classes and domestic vs foreign. Patents granted by IPC class and by country of origin at the IP Five Offices Source: http://www.fiveipoffices.org/statistics/statisticaldata.html
The Future of the IP5 The IP5 Offices have set up three Working Groups (WGs) dealing with projects and topics in the areas of: Classification (WG1) Global Dossier and patent information (WG2) Work-sharing and quality (WG3) Harmonisation of patent practices and procedures Source: http://www.fiveipoffices.org/activities.html 20
Conclusion Questions? 21