PCT Regulation Amendments

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Amendments to the PCT Regulations were made as of July 1st 2017, which bring forth modifications including:

  • Adding a new obligation for designated Offices to timely send national phase entry and related data to the International Bureau (PCT Rules 86 and 95);
  • Requiring receiving offices to transmit earlier search and/or classification results to the International Searching Authority (PCT Rules 12bis. 23bis and 41)
  • Extending the deadline for requesting supplementary international search from 19 to 22 months from the priority date (PCT Rule 45bis.1)

The PCT Yearly Review reported that international patent applications grew by 7.3% to 233,000 in 2016. Whilst US based innovators have accounted for the highest percentage of this growth for 39 years running, China-based innovators accounted for a substantial amount of overall growth.

With any questions regarding these amendments, please get in contact with your nearest RWS office.

The top global destinations for protecting your IP

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Our Founder, Justin Simpson, recently sat down with Small Business Magazine to discuss the world’s most popular international filing destinations and how businesses in the United Kingdom can maximize their IP protection across the globe.

In analyzing WIPO statistics, specifically where UK cases pop up, these are the top five destinations in order of popularity:

  1. United States of America
  2. European Patent Office
  3. China
  4. Japan
  5. Canada

To receive patent protection internationally, you’ll need to initially file a patent application in your home country. 12 months later, you have to decide about overseas filings. Either buy more time (an extra 18 months) by filing an international PCT application or file directly into those countries by filing a Direct (Paris Convention) application.

Deciding what countries to file into is a major decision. Justin discusses more about where and why to file here.

For more IP updates, feel free to follow us on social media: Twitter, Facebook & LinkedIn.

Top PCT National Stage Entry Countries for 2015

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2015 was an exciting and busy year for inovia. We maintained the title as the #1 PCT firm in the world for the second consecutive year and the #1 spot in the United States for the fifth consecutive year (according to Managing Intellectual Property magazine). In addition, we streamlined our internal procedures with the world’s top translation company, RWS Group to provide the best IP product suite in the industry.

This year, we expanded our agent network to 139 countries (we now cover over 70% of the world!) In September, we launched a stand-alone translation feature which enables clients to get a quote or place an order for IP related translations. This feature is intended for translations that are separate from existing PCT, European Validation and Direct filing orders with translations included.

With 2016 rapidly approaching, it’s also time to take a look back at the top filing destinations for inovia’s clients from the past year:

  1. China (13.49%)
  2. United States (8.59%)
  3. Japan (8.15%)
  4. Canada (6.89%)
  5. Australia (6.81%)
  6. Brazil (6.48%)
  7. Europe (5.98%)
  8. India (5.73%)
  9. South Korea (4.15%)
  10. Mexico (4.02%)

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WIPO’s May PCT Newsletter Recap

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Good afternoon! Each month, we look through WIPO’s PCT Newsletter to share the latest news impacting the international patent system. As always, there are several country-specific rules, fee changes and patent office notifications to report. Please see below for a recap of the major headlines from May:

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Top PCT National Stage Entry Countries for 2014

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2014 brought exciting changes to inovia. We expanded our global reach, improved existing technology and finally became #1 in the world. Read on for inovia’s 2014 year in review:

This year, inovia finally overtook the title of the #1 filer of PCT applications in the world while maintaining the #1 spot in the United States for the 4th consecutive year (according to Managing Intellectual Property magazine). In addition, our agent reach expanded as clients were able to file into 134 countries (68% of the world!)

In March, the inovia team announced the expansive redesign of the inovia.com platform. With our new layout, we enhanced existing technology and offered clients an even more powerful and comprehensive global instruction tool. These changes ensured that our foreign filing platform, inovia.com, was well placed to handle the volume of cases and foreign filing strategies of our clients.

With 2015 only days away, it’s time to look at the top national stage filing destinations for our clients from the past year:

1. China (12.5%)
2. Japan (8%)
3. Canada (7.5%)
4. Brazil (7.1%)
5. United States Of America (7%)
6. Australia (6.1%)
7. Europe (5.9%)
8. India (5.8%)
9. South Korea (4.7%)
10. Mexico (4.3%)

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inovia Travels: Seattle PCT Seminar

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Next week, I’ll have the pleasure of attending my first PCT seminar in Seattle, Washington. Hosted by the PCT Learning Center, the “Advanced Patent Cooperation Treaty Seminar” will feature topics including:

  • Latest updates to the PCT system
  • AIA and PLTIA related changes
  • Information on the new Global PPH (GPPH)
  • Specific module of PCT aspects of the Paris Convention
  • And more..

This event has been approved for 5.5 hours of Washington State MCLE and will attract attendees ranging from small and large IP firms to Fortune 500 companies. Registrants can expect comprehensive sessions held by intellectual property experts.

If you or your colleagues will be in the Seattle area on May 6th, consider attending the PCT seminar, tailored to U.S. practice. inovia clients and friends can receive a $50 discount for the program; contact us to learn more.

Top PCT National Stage Entry Countries for 2013

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With the New Year fast approaching, it’s time once again to look at the top national stage filing destinations for our clients from the past year.

In 2013, we retained our status as the largest US filer of PCT applications at the national stage (according to Managing Intellectual Property magazine) and expanded our global network of agents to cover 130 countries. In October, we also announced the acquisition of inovia by RWS Group, the world’s top ranking patent translation company. These changes ensure that our foreign filing platform, inovia.com, will be well placed to complement the foreign filing strategies of our vast array of clients.

Speaking of our clients, let’s take a look at their top national stage destinations in 2013:

1. China – 11.0%
2. Canada – 9.0%
3. Japan – 8.2%
4. Brazil – 7.0%
5. United States – 7.0%
6. India – 6.9%
7. Australia – 6.8%
8. Europe – 5.1%
9. South Korea – 4.4%
10. Russia – 4.0%

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Industry Updates from WIPO’s PCT Newsletter

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Hi everyone! Each month, we comb through WIPO’s PCT Newsletter to share the latest news affecting the international patent system. As always, there are several country-specific rules, fee changes and patent office notifications to report. You can check out some of these updates below:

Poland (PL)

As of October 2013, any patent attorney registered to practice before the Patent Office of the Republic of Poland may act as an agent.

International Bureau (IB)

As from January 1st, 2014, there will be the following fee changes payable to the IB as a receiving office:

  • Transmittal fee: EUR 81, USD 111

  • Priority document: USD 55

  • Read More

inovia Tops PCT Survey Once Again

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In late September, Managing Intellectual Property magazine posted the results of their 2013 PCT Survey, which ranks the top Patent Cooperation Treaty (PCT) firms by their number of applications coming due for national stage entry in 2013. I’m proud to say that inovia has placed first in the United States for the third consecutive year, handling the national stage entry of more than 1,500 PCTs in 2013. We also placed second in the global rankings behind our Chinese agent China-Pat Intellectual Property Office, who will handle 1,772 applications this year.

We take great pride in the quality and capabilities of our agent network, and would like to congratulate our associates who ranked among the top filers in their local markets:

  • China-Pat Intellectual Property Office of China (#1)
  • Nederlandsch Octrooibureau of the Netherlands (#2)
  • Meissner Bolte & Partner of Germany (#2)
  • AFD China Intellectual Property Law Office of China (#3)
  • Sunyoung International Patent & Law Firm of Korea (#3)
  • Ridout & Maybee of Canada (#3)
  • S. Majumdar & Co. of India (#3)
  • Bereskin & Parr of Canada (#4)
  • Borden Ladner Gervais of Canada (#5)
  • Harness Dickey of the United States (#8)
  • Hanol Intellectual Property & Law of Korea (#9)
  • Shelston IP of Australia (#9)
  • Freehills Patent Attorneys of Australia (#10)
  • Kilburn & Strode of the United Kingdom (#10)

As part of this year’s PCT Survey, Managing IP‘s Peter Leung spoke with inovia CEO David Nelson and other industry experts to examine the impact that “IP Portals” are having on the industry. The article references IP consultant Duncan Hart (watch the webinar we hosted with Duncan back in January on demand), who has written about how IP portals disrupt the relationships that patent attorneys have with their clients. On the contrary, Nelson and representatives from other IP portals point out the growing trend of IP firms turning to IP service providers in order to make their own practices more efficient. You can read the full article from Managing IP here - we’d love to hear your opinions on this topic in the comments section below.

The 1,500+ PCTs that inovia will handle in 2013 reflects a 10% increase from last year and is more than double the number of filings handled in 2011. If you’d like to learn more about how inovia can fit into your foreign filing practices, please feel free to get in touch with the inovia office nearest you. 

Latest Updates from the World Intellectual Property Organization

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I’d like to share some important updates from WIPO’s October PCT Newsletter. Most notably, the WIPO Member States met in late September for the annual PCT Assembly, which was held in Geneva this year. Typically during this time, the Assembly makes amendments to PCT regulations, appoints new International Searching Authorities (ISAs) and International Preliminary Examining Authorities (IPEAs),  and conducts other business related to the PCT system.

The Assembly appointed the State Intellectual Property Service of Ukraine (SIPSU) as an ISA/IPEA under the PCT. This decision will make SIPSU the 19th patent office in the world to be granted this title.  It is unclear when the office will officially begin these operations.

WIPO also released some small, country-specific changes that you should be aware of. It has been noted that all fee changes have already been included in the PCT Fee Tables published in early September:

  • Brazil (BR) – Applicants can now request prioritized examination of their application if they are over 60 years of age and can confirm one of the following: 1) claims in the application are being infringed, or 2) grant of patent is a condition for obtaining funding.
  • Colombia (CO) – Annual patent fees for the 1st to 4th years have changed to COP $206,000 (COP $306,000 in the case of late payment).
  • Croatia (HR) – New requirements have been posted for those who wish to act as an agent before the patent office. Click here and scroll to page 2 for info.
  • Latvia (LV) – The following fees must be paid in euros, beginning on January 1st, 2014: transmittal fee & fee for priority document.
  • Portugal (PT) – Filing/examination fees for patents and utility models have changed as of July 1st. Click here and scroll to page 8.

Finally, the PATENTSCOPE search system now includes PCT national phase information for the following countries: Austria, Cuba, India, New Zealand, and Thailand. The system now covers 48 patent offices. Very exciting!

WIPO Releases New PCT Video Series

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We have included the next two episodes of WIPO’s latest video series, “Learn the PCT” for your consideration below.  These short segments educate inventors and applicants on various PCT processes.  To learn more, please check out our previous posts here: Part 1 & Part 2

In episode 5, Matthias Reischle, Deputy Director of the PCT Legal Division, discusses the role of agents and common representatives under the PCT.  In episode 6, he talks about what a priority claim is and how to make priority claims in an international application. 

Episode 5: Representation of PCT Applicants


Episode 6:  Priority Claims and Priority Documents

Please be sure to check back soon for the next two episodes in this WIPO series .  As always, for more information on filing your PCT at the national phase, visit out our website or follow us on Twitter!