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Category Archive: PCT

Are patents going to become harder to get?

Many people presume that in the age of the global village patents are international. The fact that PCT applications are referred to as “international applications” contributes to this common misconception.

Those of us that represent patent Applicants are painfully aware of the fact that the procedure for obtaining a granted patent is a country by country proposition with all of the attendant fees, laws, regulations and bureaucracy.

Even the International (PCT) stage of examination can have different results depending on which International Search Authority (ISA) the Applicant selects for their PCT application.

Results differ because each ISA has a tendency to search for references in its own primary language.

For example, The United States Patent and Trademark Office (USPTO) looks primarily for English language references, most often US patents or published US applications. The European Patent Office (EPO) is nominally comfortable citing references in English, French, or German, which means they most often cite US or EPO references, with an occasional French patent or German patent or UK patent finding its way into their search results. The Chinese Intellectual Property Office (SIPO), Japanese Patent Office (JPO) and Korean Intellectual Property Office (KIPO) each tend to focus primarily on references in their own language (including PCT applications in the relevant language). The five patent offices together are referred to as the IP5.

The net result is that different ISAs within the IP5 cite different references because they are searching different databases.

Until recently, English was king in the world of patents. More recently, the Chinese government has made patenting a national priority. As a result, the number of applications filed in China each year is greater than any of the other IP5 offices.  According to WIPO (World Intellectual Property Organization) in 2016, the USPTO received 0.52 million new patent applications and the SIPO received 1.26 million new patent applications. In the same year, the JPO received 0.46 million new patent applications and the KIPO received 0.23 million new patent applications. EPO statistics indicate about 0.3 million patents were filed there in the same year.

This means in 2016 there were 0.8 million applications filed in western languages (USPTO + EPO) and 1.96 million applications filed in Asian languages (SIPO+JPO+KIPO). In other words, only about 30% of new applications are in western languages.

This means that the USPTO and EPO, by searching primarily, if not exclusively, in western language databases in their role as ISA are ignoring a significant proportion of relevant references when they examine a PCT application for patentability.

As a result, many western Applicants are surprised by Asian language references discovered for the first time during national stage examination in China and/or Korea and/or Japan. Conversely many Asian Applicants are surprised by western language references discovered for the first time during national stage examination in the USPTOand/or the EPO.

In order to address this issue the IP5 have instituted a pilot program called “IP5 PCT Collaborative Search & Examination” (abbreviated as CSE). According to this program, an Applicant selects one of the IP5 offices as a main ISA. The main ISA performs a search and prepares a draft  international search report (ISR) and written opinion (WO). The draft ISR/WO and a record of the search is  shared with the other four offices  in the IP5 (peer offices).

The peer offices review the draft ISR/WO, perform additional searching as deemed necessary, and provide comments back to the main ISA. The main ISA then prepares the final ISR/WO, taking into account the peer contributions.

The following process model provided by WIPO presents the procedure schematically:

Note that at this stage participation in the CSE program is purely voluntary and you need to file a request to be included.

However, if the CSE program becomes standard, PCT applications will routinely be exposed to more references, in more languages, at the international stage. That would almost certainly make patents harder to get in specific countries during the national stage.

Alternatively, routine exposure of PCT applications to more references, in more languages, at the international stage could lead to granting of narrower claims, which consider the prior art, in the national stage. These narrower claims would presumably fare better during opposition, inter partes review and infringement litigation.

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