PCT News & Announcements

News & Announcements Concerning the PCT:

01 July 2015 Change to Rospatent Search Fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that an increased dollar amount has been established for the search fee required by the Russian Federal Service for Intellectual Property (Rospatent).  Effective 01 July 2015, the dollar amount of the search fee required by the Rospatent when acting as an International Searching Authority will be $525.

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

 

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 dollar amount of the search fee required by the JPO when acting as an ISA will be $577.

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.

 

01 June 2015 Change to Rospatent Search Fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that an increased dollar amount has been established for the search fee required by the Russian Federal Service for Intellectual Property (Rospatent).  Effective 01 June 2015, the dollar amount of the search fee required by the Rospatent when acting as an International Searching Authority is $450.

 

01 April 2015 Changes to Certain Search Fees

The International Bureau of the World Intellectual Property Organization has informed the USPTO that the dollar amounts of the search fees required by the following International Searching Authorities was changed, effective 01 April 2015.

• European Patent Office (EPO) - $2125

• IP Australia (IPAU) - $1789

 

The Israel Patent Office (ILPO) as ISA/IPEA

The United States Patent and Trademark Office (USPTO) and the Israel Patent Office (ILPO) have implemented an agreement under which ILPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed with the USPTO as the Receiving Office (RO/US), under the Patent Cooperation Treaty (PCT). The starting date for the agreement is October 1, 2014.

The following restrictions apply: 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.

For cited documents in the International Search Report, the ILPO intends to furnish the applicants with copies of the documents upon request and on payment.

 

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.

 

18 December 2013 Changes

Effective 18 December 2013, the United States Patent and Trademark Office is implementing new rules pertaining to The Patent Law Treaties Implementation Act of 2012. With regards to the PCT, the new rules will affect international and national phase applications in the following manner:

Petition to revive unavoidably abandoned international application:

- no longer available in view of the change to 35 U.S.C. 41(a)(7), 119, and 120 in section 202(b) of the Patent Law Treaties Implementation Act of 2012

Petition to revive unintentionally abandoned international application:

- undiscounted/small entity fees decrease from $1,900/$950 to $1,700/$850

- micro entity discount is no longer available under 37 CFR 1.17(m)

Request for the restoration of the right of priority:

- undiscounted/small entity fees increase from $1,420/$710 to $1,700/$850

- micro entity discount is no longer available under 37 CFR 1.17(m)

 

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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