PCT News & Announcements

News & Announcements Concerning the PCT:

New PCT Contracting States

On 9 June 2016, Kuwait (country code: KW) deposited its instrument of accession to the PCT, thus becoming the 149th Contracting State of the PCT, and on 9 September 2016, will become bound by the PCT. Consequently, any international application filed on or after 9 September 2016 will automatically include the designation of Kuwait. Also, because Kuwait will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 9 September 2016.  Furthermore, nationals and residents of Kuwait will be entitled, as from 9 September 2016, to file international applications under the PCT.

On 23 June 2016, Djibouti (country code: DJ) deposited its instrument of accession to the PCT, thus becoming the 150th Contracting State of the PCT, and on 23 September 2016, will become bound by the PCT. Consequently, any international application filed on or after 23 September 2016 will automatically include the designation of Djibouti. Also, because Djibouti will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 23 September 2016.  Furthermore, nationals and residents of Djibouti will be entitled, as from 23 September 2016, to file international applications under the PCT.

 

01 July 2016 Changes to Certain Search Fees

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that new dollar amounts have been established for the search fees required by the Australian Patent Office (IP Australia) and the Russian Federal Service for Intellectual Property (Rospatent) with effect from 01 July 2016.

The dollar amount of the search fee required by the IP Australia when acting as an International Searching Authority is $1,674 beginning 01 July 2016.

The dollar amount of the search fee required by the Rospatent when acting as an International Searching Authority is $420 beginning 01 July 2016.

The revised PCT Fee Schedule is available at: http://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars.

 

Use of WIPO’s ePCT System for Preparing the PCT Request for Filing with RO/US

Beginning on 01 June 2016, the United States receiving office (RO/US) will accept international applications under the PCT that are filed electronically with a PCT Request prepared in the World Intellectual Property Organization’s (WIPO) ePCT system.  ePCT allows users to generate a zip file containing a validated PCT Request; the zip file can then be submitted electronically to the RO/US as part of an international application filed using the USPTO’s electronic filing system (EFS-Web).  Furthermore, like PCT-SAFE, the zip file generated by ePCT will entitle the applicant same reduction in international filing fees as indicated in item 4(b) of the PCT Schedule of Fees.  For detailed information, please see https://www.gpo.gov/fdsys/pkg/FR-2016-05-06/pdf/2016-10733.pdf.

 

01 June 2016 Change to JPO Search Fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by the Japan Patent Office (JPO) with effect from 01 June 2016.

The dollar amount of the search fee required by the JPO when acting as an International Searching Authority is $1,378 beginning 01 June 2016.

 

Revised Arrangement for the Israel Patent Office (ILPO) as ISA/IPEA

A revised arrangement has been made between Israel Patent Office (ILPO) and United States Patent and Trademark Office (USPTO) concerning action of the ILPO as an ISA/IPEA under the PCT for certain international applications received by the USPTO as receiving Office (RO/US).

The conditions under which the ILPO will act as an ISA and IPEA for international applications filed with the RO/US have been changed with effect from 10 April 2016.

The new revised arrangement includes:

  • the rising  of numerical limitation up to 100 international applications during the relevant fiscal quarter, instead of 75;
  • as well as lifting of the bar on scope of classifications: the condition that the ILPO would not act as an ISA for applications with one or more claims directed to the field of business methods as defined by specified areas of the IPC has been removed.

Please be advised, that under this revised arrangement, the ILPO may act as an ISA under the PCT for international applications filed with the RO/US provided that:

(i) The applications are submitted in the English language;

(ii) ILPO has not received more than 100 international applications from USPTO during the current fiscal quarter; and

(iii) The ILPO is designated as a competent searching authority by the applicants of said applications.

 

The Intellectual Property Office of Singapore (IPOS) as ISA/IPEA

Effective 01 April 2016, the Intellectual Property Office of Singapore (IPOS) may act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications filed with the United States Patent and Trademark Office (USPTO) as a Receiving Office (RO/US).  The dollar amount of the search fee required by the IPOS when acting as an ISA is $1578.

The following restrictions apply: (1) the international applications are submitted in the English language; and (2) the IPOS is chosen as a competent authority by the applicants of said applications. The IPOS will also act as an IPEA only where the IPOS had acted as the ISA.

 

The Japan Patent Office (JPO) as ISA/IPEA

Effective 01 July 2015, the Japan Patent Office (JPO) may act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications filed with the United States Patent and Trademark Office (USPTO) as a Receiving Office (RO/US).

The following restrictions apply: (1) the applications are submitted in the English language; (2) the claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes; (3) the JPO has not received more than 5,000 international applications from the USPTO during the 3 year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications. The JPO will also act as an IPEA if these four requirements are met, and the JPO acted as the ISA.

 

PCT Help Desk Expanded Hours

Effective Tuesday 27 May 2014, the hours of operation for PCT Help Desk will be expanded to better serve our customers. The PCT Help Desk, which provides information and assistance on the PCT process, may be reached by telephone at (571) 272-4300 between the hours of 8:30 am and 5:00 pm (EST/EDT), Monday through Friday or by facsimile (FAX) at (571) 273-0419 twenty-four hours a day.

 

PCT-Patent Prosecution Highway (PPH) Between USPTO and and Various Intellectual Property Offices

The Patent Prosecution Highway (PPH) program has been expanded on a test basis to permit PPH eligibility for national- and regional-phase applications under the Patent Cooperation Treaty (PCT) on the basis of positive results in the PCT international phase. Under the PCT-PPH program, an applicant receiving a written opinion or an international preliminary examination report from one of the participating Offices that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the other office fast track the examination of corresponding claims in corresponding applications. The PCT-PPH will leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. As of May 25, 2010, the USPTO has eliminated the fee for the petition to make special under the PPH programs.

For a complete listing of the participating Offices, please visit: http://www.uspto.gov/patents/init_events/pph/index.jsp.

 

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