Alfred Spigarelli June 2015Director Patent Procedures Management

PCT DirectCurrent program and extension for non-European applicants

2Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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.

1. 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

2. 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

3Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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):

o if protection in Europe is sought than the additional cost is:

(PCT - EP filing fees) + (PCT – EP search fee)

o all other costs for protection beyond own country and Europe postponed to

after 30 months Cost effective because:

o Internal administration costs reduced (National patent office also RO)

o No representative abroad necessary until 30 months

o Not necessary to redraft application if drafted from the beginning for the PCT

route (drafting can be optimised latter for national prosecution)

o No additional search fee at EPO latter with direct entry into examination

o Discounts available in most designated offices with ISR and WOISA form

EPO

4Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

Example PCT Route with RO/US and EPO/ISA

1st filing at USPTO

PCT filing under US priority at RO/US

ISR + WOISA from ISA/EPO

Entry national/ regional phase

0 m.

12 m.

17 m.

30 m.31 m. for EPO

Chapter II at IPEA/EPO

22 m.

- US application costs

- PCT filing fee- Transmission fee- Int. search fee EPO- No foreign attorney- No redrafting- Reduced admin .costs

- High Quality and thorough pre-exam (see IAM survey)- Largely reused by most D.O.- Results fully recognised by DO/EPO

- Only if WOISA negative- Results fully recognised by EO/EPO- 1 written opinion + 1 phone call possible- Positive IPER expectable

- 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

5Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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

6Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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.

7

PCT Direct: Linking PCT and 1st filingsin Europe

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office 8

PCT Direct overview

EP 1st filing Nat. 1st Filing

EPO SR + SO

PCT application + reply to SO

ISR + WOISA

WOISA positive?PCT Chap II

Entry Reg. And Nat. Phase with PPH

Euro-PCT high priority direct grant

0 m

6 m

12 m

17 m

37 m

30-31 m

• Applicant should use RO/EP

• ISR and WOISA based on reply 1st to earlier search opinion

NO YES

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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)

Main benefits of PCT Direct

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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

10

Current potential users

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent 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

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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

12

Possible extensions

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

PCT-Direct extension to non-European

13

PCT 1st filing e.g. at RO/USPTO

PCT 2nd filing + reply to WOISA on 1st filing at RO/USPTO with ISA/EPO

0 m

< 3 m

6 m

< 12 m

EPO ISA

EPO ISR + WOISA on 1st PCT

ISR + WOISA on 2nd PCT

WOISA positive?PCT Chap II

Entry Reg. And Nat. Phase with PPH

Euro-PCT high priority direct grant

17 m

37 m

30-31 mNO YES

Priorityclaim

Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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.

Difference with PCT Direct as now:

15Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

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16Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office

Thank you for your attention