PCT news and announcements

News and announcements concerning the Patent Cooperation Treaty (PCT):

01 August 2018 Change to ROSPATENT 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 Russian Federal Service for Intellectual Property (Rospatent) and will go into effect 01 August 2018.  The new dollar amount of the search fee required by the Rospatent when acting as an International Searching Authority will be $638 beginning 01 August 2018.

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.

 

01 July 2018 PCT Collaborative Search and Examination Pilot

On 01 July 2018, the five largest intellectual property offices in the world (IP5) launched a Patent Cooperation Treaty (PCT) Collaborative Search and Examination Pilot.  The pilot allows examiners from all five offices, with different working languages, to collaborate on the search and examination of a single international application. The result is an international search report and written opinion from the chosen international searching authority based on contributions from all participating offices.  Benefits to applicants include a search done by multiple examiners in different languages, increased predictability of outcome, and no extra cost.

For more information, including how to request to have an application included, view the Federal Register Notice or visit the pilot's page on the USPTO website.

 

01 June 2018 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 2018.  The new dollar amount of the search fee required by the JPO when acting as an International Searching Authority is $1,465 beginning 01 June 2018.

 

01 April 2018 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 European Patent Office (EPO) and the Korean Intellectual Property Office (KIPO) with effect from 01 April 2018.

The new dollar amount of the search fee required by the EPO when acting as an International Searching Authority is $2,207 beginning 01 April 2018.

The new dollar amount of the search fee required by the KIPO when acting as an International Searching Authority is $1,218 beginning 01 April 2018.

 

01 March 2018 Change to ILPO 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 Israel Patent Office (ILPO) with effect from 01 March 2018.  The new dollar amount of the search fee required by the ILPO when acting as an International Searching Authority is $1,009 beginning 01 March 2018.

 

16 January 2018 Changes to Certain Fees

On November 14, 2017, the United States Patent and Trademark Office issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017”, to set or increase certain patent fees, as authorized by the AIA.  Pursuant to the final rule, the following International Stage and National Stage fees were changed/added effective 16 January 2018.

 

PCT – International Stage

Description

Regular

Small

Micro

Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 13ter

$300

$150

$75

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d))

$2,000

$1,000

$500

 

PCT – US National Stage filing under 35 U.S.C. 371

Description

Regular

Small

Micro

Basic National Stage Fee

$300

$150

$75

National Stage Search Fee - Search fee (37 CFR 1.445(a)(2)) paid to USPTO as the International Searching Authority

$140

$70

$35

National Stage Search Fee - International Search Report prepared by other than the US and provided to the USPTO or previously communicated to the US by the International Bureau 

$520

$260

$130

National Stage Search Fee - All other situations

$660

$330

$165

National Stage Examination Fee - All other situations other than the US was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4)

$760

$380

$190

For each independent claim in excess of 3

$460

$230

$115

For each claim in excess of 20

$100

$50

$25

For each application containing a multiple dependent claim

$820

$410

$205

Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(b)

$2,000

$1,000

$500

Submission of Sequence Listing of 300 MB to 800 MB

$1,000

$500

$250

Submission of Sequence Listing of more than 800 MB

$10,000

$5,000

$2,500

 

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.

 

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 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-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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