PCT Patent Prosecution Highway (PCT-PPH) Pilot Programs: WWW - Wipo.int/pct/en
PCT Patent Prosecution Highway (PCT-PPH) Pilot Programs: WWW - Wipo.int/pct/en
PCT Patent Prosecution Highway (PCT-PPH) Pilot Programs: WWW - Wipo.int/pct/en
04/2018
New two-way PCT-PPH pilot program (National Institute of Industrial Property (Chile) –
State Intellectual Property Office of the People’s Republic of China)
On 1 January 2018, a new two-way PCT-PPH pilot program started between the National
Institute of Industrial Property (Chile) and the State Intellectual Property Office of the People’s
Republic of China) (SIPO). Under this program, accelerated processing in the national phase in
one country is available on the basis of a PCT application with a positive written opinion from
either the International Searching Authority (ISA) or the International Preliminary Examining
Authority (IPEA), or a positive international preliminary report on patentability (IPRP) (Chapter II)
(that is, where at least one of the claims has been determined as patentable), issued by the
Office of the other country in its capacity as ISA/IPEA.
Further information on the above-mentioned PCT-PPH agreements is available at:
https://www.inapi.cl/portal/publicaciones/608/w3-article-11454.html
http://www.sipo.gov.cn/ztzl/zlscgslpphzl/pphzn/1110649.htm
Extension of existing PPH pilot program to include PCT work products (Intellectual
Property Office of Singapore – SIPO)
The already-existing PPH pilot program between the Intellectual Property Office of Singapore
and SIPO was extended to include the use of PCT work products on 1 September 2017. This
means that accelerated processing in the national phase in one country is available on the basis
of a PCT application with a positive written opinion from either the International Searching
Authority (ISA) or the International Preliminary Examining Authority (IPEA), or a positive
international preliminary report on patentability (IPRP) (Chapter II) (that is, where at least one of
the claims has been determined as patentable), issued by the Office of the other country in its
capacity as ISA/IPEA.
Further information on the above-mentioned PCT-PPH agreements is available at:
https://www.ipos.gov.sg/protecting-your-ideas/patent/application-process/expedite-filing-to-
countries-outside-SG
http://www.sipo.gov.cn/ztzl/zlscgslpphzl/pphzn/1110648.htm
The PCT-PPH page of the PCT website has been updated accordingly at:
http://www.wipo.int/pct/en/filing/pct_pph.html
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New function for previewing the file content of a PCT application before publication
It is recalled that in PCT Newsletter No. 12/2017, page 2, information was given about the new
possibility of indicating that the original application contains color or greyscale, and the
availability on PATENTSCOPE of the original application content. This new feature was
introduced because, even though color elements are not generally permitted in international
applications, it was recognized that such elements are sometimes nevertheless received. The
new measure permits applicants filing their applications in electronic form using ePCT-Filing or
PCT-SAFE to check a box to indicate that the application body (description, claims, abstract
and/or drawings) contains color or greyscale elements. By doing so, a notice will be included
on the front page of the published application, indicating that the application as filed included
color or greyscale content, and that the original files are available from PATENTSCOPE. It is
important to note that all international applications will continue to be converted to pure black
and white formats for further processing and publication by the International Bureau (IB).
Given that there is the risk that the conversion to black and white may result in certain
inaccuracies when compared with the original document, a dedicated preview function has been
made available by the IB in order to view the file content as it will be rendered by the IB for
subsequent processing and publication, in order to verify that the content of the converted
images is as intended. Since the preview function is based on the actual services which are
used for document import and publication at the IB, it should closely resemble what will be
published by the IB.
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The preview function (the “PDF Conversion Checker”) is included within the “Application Body
Converter” at:
https://pctdemo.wipo.int/DocConverter/pages/pdfValidator.xhtml
By clicking on the downwards-facing arrow at the top of the page, you will also have access to
other useful functions and a user guide.
Please note that the same preview function is already offered directly as part of ePCT-Filing,
with the exception of filings with the receiving Offices which do not allow upload of the
application body within ePCT (that is, the receiving Offices of the Israel Patent Office and the
United States Patent and Trademark Office).
PCT-SAFE Update
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CA Canada (required contents of the translation for national phase entry; furnishing of
copies of international applications; special requirements for entry into the national
phase)
Further to the information published in PCT Newsletter No. 02/2018, the Canadian Intellectual
Property Office, in its capacity as designated (or elected) Office has notified the IB that the
applicant is only required to send a translation of the request (where applicable), and a copy of
the international application, if the application enters the national phase prior to the publication
of the international application. This may be the case where the applicant expressly requests
an earlier start of the national phase under PCT Article 23(2).
The Office has clarified one of its requirements under PCT Rule 51bis as follows: if the
applicant is not the applicant originally identified in the international application, evidence that
the applicant is the legal representative of the originally identified applicant should be submitted
to the Office. If the evidence has not already been submitted the Office will invite the applicant
to provide it. Acceptable forms of evidence include Form PCT/IB/306, an assignment, or a
change of name document.
(Updating of PCT Applicant’s Guide, National Chapter, Summary (CA))
CN China (fees)
The State Intellectual Property Office of the People’s Republic of China, in its capacity as
receiving Office, has notified the fee for furnishing copies of documents contained in the file of
the international application, in accordance with PCT Rule 94.1bis, payable with effect from
1 July 2017. The amount of that fee is CNY 2 per page.
(Updating of PCT Applicant’s Guide, Annex C (CN))
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Intellectual Property Office is an operating name of the Patent Office.
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Excess claims fee for each claim in excess of 25: 2 ................. GBP 20
Excess pages fees for each page of description over 35:2 ...... GBP 10
Search fee:
- where a search has already been made by an
International Searching Authority in accordance
with the PCT: ............................................................. GBP 150 3
- in other cases: ........................................................... GBP 1803
Substantive examination fee:................................................... GBP 130
(Updating of PCT Applicant’s Guide, National Chapter, Summary (GB))
KR Republic of Korea (types of electronic carrier for nucleotide and/or amino acid
sequence listings in electronic form)
The Korean Intellectual Property Office, in its capacity as International Searching Authority
(ISA), has specified the types of electronic medium that it accepts for the furnishing of
nucleotide and/or amino acid sequence listings in electronic form: it accepts diskettes,
CD-ROM, CD-R, DVD or DVD-R.
(Updating of PCT Applicant’s Guide, Annex D (KR))
2
Excess claims and excess pages fees may also be payable at grant if the number of claims and pages increase during
the processing of the application. If this is the case the Office will invite the applicant to pay a grant fee by filing a
Form 34.
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This fee is reduced by GBP 30 when search/substantive examination is requested electronically.
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SG Singapore (fees)
The Intellectual Property Office of Singapore has notified the amount of the fee for an electronic
copy of the priority document – the fee is SGD 28. The amount for a paper copy has not
changed.
(Updating of PCT Applicant’s Guide, Annex C (SG))
Search fee and other fees relating to international search (Australian Patent Office,
Canadian Intellectual Property Office, European Patent Office, Japan Patent Office, State
Intellectual Property Office of the People’s Republic of China)
As from 1 June 2018, there will be changes in the equivalent amounts payable in the currencies
specified below for international searches carried out by the following Offices:
Australian Patent Office ........................................................... EUR
Canadian Intellectual Property Office ...................................... EUR
Japan Patent Office ................................................................. KRW, USD
The Canadian Intellectual Property Office has also notified changes to the conditions for refund
of the search fee: where the applicant requests the Authority to take into account the results of
an earlier search, and the Authority benefits from that earlier search, there is a refund of 25% of
the fee, depending upon the extent to which the Authority benefits from that earlier search.
4
All documents except the following: certified documents including priority documents; documents needed to receive an
international filing date under PCT Article 11; authorizations charging the basic national fee to a deposit account; when
necessary, a copy of the international application for entry into the national phase; documents directly related to a
secrecy order.
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With effect from 1 December 2017, there have been changes to the conditions for refund of the
search fee payable to the European Patent Office where the international search report drawn
up by the Office is based on an earlier search report prepared by the Office on an application
the priority of which is claimed for the international application, as follows:
– for a European search (EPC Article 92), an international search (PCT Article 15(1)), a
supplementary international search (PCT Rule 45bis) or a search made on behalf of a
national Office on a national application (BE, 5 CY, FR, GR, IT, LT, LU, LV, 6 MC,6 MT,
NL,5 SM, TR):
full benefit: ...................................................................... refund of 100%
partial benefit: ................................................................. refund of 25%
– for an international-type search (PCT Article 15(5)):
full benefit: ...................................................................... refund of 70%
partial benefit: ................................................................. refund of 17.5%
The State Intellectual Property Office of the People’s Republic of China, in its capacity as ISA,
has notified the fee for furnishing copies of documents contained in the file of the international
application, in accordance with PCT Rule 94.1ter, payable with effect from 1 April 2018. The
amount of that fee is CNY 2 per page.
(Updating of PCT Applicant’s Guide, Annex D (AU, CA, CN, EP, JP))
Practical Advice
5
Includes international-type searches covered by an agreement between the Authority and that Office.
6
Applies to search requests in respect of national applications filed as of 1 October 2016 for Latvia and as of 1 April 2017
for Monaco.
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rights to utility models, which can be referred to as “petty patents”, “innovative patents”, “short-
term patents”, “utility innovations”, or “innovation patents”. However, for the purposes of this
“Practical Advice” the term “utility models” covers both utility models and other similar rights.
Official fees for obtaining utility models are generally lower than those for patents. As there is
no substantive examination of utility model applications prior to registration in most countries, no
examination fee is due before registration and the registration process is simpler and faster than
obtaining a patent, taking, on average, six months. Although maintenance or renewal fees must
be paid during the term of protection of a utility model, these are also generally lower than for
patents.
Even though it may be cheaper to obtain and maintain protection through utility models
compared to patents, and the process of registration is simpler and faster, you should be aware
of other differences between utility models and patents which you may need to take into
account when deciding how to protect a technical invention:
– the requirements for acquiring utility model protection are generally less stringent than
for patents – while the requirement of "novelty" must always be met, this requirement
might be applied only at a local level in the case of utility models. Furthermore, the
requirement of "inventive step" (or "non-obviousness") may be much lower or absent
altogether in the case of utility models. Utility model protection is therefore possible for
innovations of a rather incremental character which may not meet the patentability
criteria;
– the term of protection for utility models is shorter than for patents and varies from
country to country (usually between 7 and 10 years without the possibility of extension
or renewal, although in the case of a few Offices, it is more than 10 years));
– although in some countries, utility models can be applied for in the same fields of
technologies as patents, in other countries, utility model protection can only be obtained
for certain fields of technology and/or it can be obtained only for products, such as
devices or apparatus, but not for processes or chemical substances. In fact, eligible
subject matter for utility models varies significantly from one country to another, and if
you are thinking of requesting utility model protection in any particular designated (or
elected) State, you are advised to check with a local agent in that State what kind of
subject matter can be covered.
Further information on utility model laws in the various countries which offer such protection can
be found under “IP legislation” at:
http://www.wipo.int/wipolex/en/
In conclusion, utility model protection is cheaper to obtain and maintain, the requirements for
acquiring a utility model are often less stringent, and the registration process is generally
simpler and faster without substantive examination. However, this does not mean that utility
model protection is a more favorable alternative to patent protection in all cases. You should be
aware that the lack of substantive examination means that there is less legal certainty with
respect to the validity of a registered utility model. In addition, if the invention is expected to be
relevant in the market for a long period, utility model protection might not give sufficient
protection. The specific features of the utility model system and the patent system in a given
country should therefore be carefully examined, on a case by case basis, in order to determine
the best way of protecting an invention.
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In many cases, utility model protection and patent protection are not necessarily alternatives,
but utility model protection might be used as a complement to patent protection, since a utility
model may be quickly obtained while waiting for the grant of a patent. Furthermore, it is
possible in some countries to convert a utility model application (or a utility model) to a patent
application (or a patent), and vice versa.
For further information on utility models, a useful document containing frequently asked
questions is available on the WIPO website at:
http://www.wipo.int/patents/en/topics/utility_models.html
Further information on the PCT Offices which offer utility model protection, as well as
information on how to request such protection in respect of an international application, will be
published in the next issue of the PCT Newsletter (No. 05/2018).
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PCT Webinars
(http://www.wipo.int/pct/en/seminar/webinars/index.html)
(http://www.wipo.int/patentscope/en/webinar/)
Date and time Language Nature of webinar; Registration
of WIPO speakers
webinar
24 April 2018 English PATENTSCOPE webinar: Overview https://register.gotowebinar.com/rt/375569
8:30–9:30 CET or of PATENTSCOPE 2414826051073
26 April 2018 WIPO speaker: Ms. Ammann
17:30–18:30 CET
24 April 2018 Japanese Best Practices in the PCT – https://register.gotowebinar.com/register/27
9:30–10.30 CET International Phase 06700049163601411
(16:30–17:30 Tokyo WIPO speaker: Mr. Fujita
time)
25 April 2018 Chinese Special procedures in the https://register.gotowebinar.com/register/84
9:00–10:00 CET international phase (1) 93851958280806145
(15:00–16:00 Beijing WIPO speaker: Mr. Yu
time)
8 May 2018 Japanese Introduction to ePCT (Basic) https://register.gotowebinar.com/register/21
9:30–10.30 CET WIPO speaker: Mr. Ushida 98512371875428099
(16:30–17:30 Tokyo
time)
15 May 2018 Japanese Introduction to ePCT (Advanced) https://register.gotowebinar.com/register/15
9:30–10.30 CET WIPO speaker: Mr. Ushida 37473886628677635
(16:30–17:30 Tokyo
time)
29 May 2018 English PATENTSCOPE webinar: https://register.gotowebinar.com/rt/337327
8:30–9:30 CET or PATENTSCOPE for beginners 5673615779585
31 May 2018 WIPO speaker: Ms. Ammann
17:30–18:30 CET
6 June 2018 Chinese Special procedures in the https://attendee.gotowebinar.com/register/6
9:00–10:00 CET international phase (2) 384477383299569921
(15:00–16:00 Beijing WIPO speaker: Mr. Yu
time)
26 June 2018 English PATENTSCOPE webinar: https://register.gotowebinar.com/rt/254488
8:30–9:30 CET or PATENTSCOPE for experts 1623016771329
28 June 2018 WIPO speaker: Ms. Ammann
17:30–18:30 CET
17 July 2018 English PATENTSCOPE webinar: Chemical https://register.gotowebinar.com/rt/324159
8:30–9:30 CET or structure search 4862538409217
19 July 2018 WIPO speaker: Ms. Ammann
17:30–18:30 CET
Other IP events
International Trade Fair for Ideas – Inventions – New Products (iENA), Nuremberg (Germany),
1-4 November 2018
The international trade fair for “Ideas – Inventions – New Products” will take place in Nuremberg from
1 to 4 November 2018.
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11
CO COP 952,000 COP eq CHF 1,330 eq CHF 15 – eq CHF 200 eq CHF 300 AT BR CL EP ES KR
RU
CR USD 250 USD 1,366 15 – – – CL EP ES
CU CUC 200 CUC 1,366 15 – 205 308 AT BR CL EP ES RU
CY EUR 191 EUR 1,163 13 – – – EP
CZ CZK 1,500 EUR 1,163 13 – 175 262 EP XV
DE EUR 90 EUR 1,163 13 – 175 262 EP
DJ USD 100 USD 1,366 15 – – – AT EG EP
or eq DJF
DK DKK 1,500 DKK 8,650 100 – 1,300 1,950 EP SE XN
DM Information not yet available
DO USD 275 USD 1,366 15 – 205 308 CL EP ES US
DZ DZD None CHF 1,330 15 – 200 300 AT EP
EA RUB 1,600 USD 1,366 15 – 205 308 EP RU
12
EC USD – USD 1,366 15 – – – CL EP ES
EE EUR 120 EUR 1,163 13 – 175 262 EP
EG USD 142 USD 1,366 15 – 205 308 AT EG EP US
EP EUR 130 EUR 1,163 13 87 175 262 EP
ES EUR 74.25 EUR 1,163 13 – 175 262 EP ES
FI EUR 135 EUR 1,163 13 – 175 262 EP FI SE
FR EUR 62 EUR 1,163 13 – 175 262 EP
GB GBP 75 GBP 1,029 12 – 155 232 EP
GD Information not yet available
13
GE USD 100 USD 1,366 15 – 205 308 AT EP IL RU US
14
GH GHS 2,500 or 5,000 USD 1,366 15 – – – AT AU CN EP SE
GR EUR 115 EUR 1,163 13 – – – EP
GT GTQ eq USD 250 USD 1,366 15 – – – AT BR CL EP ES US
HN USD 200 USD 1,366 15 – – – EP ES
HR HRK 200 HRK eq CHF 1,330 eq CHF 15 – eq CHF 200 eq CHF 300 EP
HU HUF 11,800 HUF 363,000 4,100 – 54,600 81,900 EP XV
15
IB CHF 100 CHF 1,330 15 – 200 300 See footnote 16
or EUR15 87 or EUR 1,163 13 – 175 262
or USD15 103 or USD 1,366 15 – 205 308
ID IDR 1,000,000 IDR eq CHF 1,330 eq CHF 15 – eq CHF 200 eq CHF 300 AU EP JP KR RU SG
IE EUR 76 EUR 1,163 13 – – – EP
IL ILS 550 USD 1,366 15 – 205 308 EP IL US
IN INR 17,600 (paper USD 1,366 15 – 205 308 AT AU CN EP IN SE
filing)17 US
INR 16,000 (e-filing) 17
IR IRR 50,000 IRR eq CHF 1,330 eq CHF 15 – eq CHF 200 eq CHF 300 CN EP IN RU
(natural persons)
IRR 500,000
(legal persons)
IS ISK 17,300 ISK 145,200 1,600 – 21,800 32,800 EP SE XN
IT EUR 30.99 EUR 1,163 13 – 175 262 EP
JO USD 100 or eq JOD USD 1,366 15 – 205 308 AT AU EP
JP JPY 10,000 18 JPY 153,800 1,700 – – 34,700 EP JP SG
KE USD 250 (or KES equiv) USD 1,366 15 – – – AT AU CN EP SE
plus cost of mailing
KG None USD 1,366 15 – – – EP RU
[continued on next page]
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