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PCT Newsletter – No. 03/2004 – March 2004
Prototype of PCT Electronic Gazette Top countries of origin. The table, opposite,
Becomes Production Version shows the top 20 countries of origin of interna-
tional applications for that period. (Note that
Following extensive public testing of the proto- applications filed with the European Patent
type of the enhanced version of the PCT Office, the International Bureau, the Eurasian
Electronic Gazette, that version has now Patent Office or the African Intellectual Property
become the production version. Organization as receiving Offices (which
amounted to 19.1% of all applications) are
New features of the PCT Electronic Gazette included in the figures relating to the countries
include: of residence of the applicants.)
• searchable access to the full text of the
description and claims;
PCT filings received at WIPO
• a single, simplified layout;
by country of origin (2003)
• “reactive” INID codes (when the cursor is Country of origin Applications % of
placed over a code or the code is clicked, the received total
title of the code appears); and US 39,250 35.7
JP 16,774 15.2
• information on republications (including the
images of republished pages). DE 13,979 12.7
GB 6,090 5.5
The PCT Electronic Gazette contains data FR 4,723 4.3
relating to published PCT international applica-
NL 4,180 3.8
tions (PCT pamphlets) published as from
January 1997, and also includes any PCT KR 2,947 2.7
pamphlets republished as from April 1998. SE 2,491 2.3
Bibliographic data, abstracts, drawings and CH (incl. LI) 2,379 2.2
images of PCT pamphlets are provided for all CA 2,102 1.9
published and republished international applica-
IT 2,023 1.8
tions in the collection. For international applica-
AU 1,729 1.6
tions published and/or republished since April
1998, the searchable text of claims and de- FI 1,497 1.4
scriptions is also provided. CN 1,205 1.1
IL 1,161 1.0
The bibliographic data, abstracts, drawings and
DK 1,021 0.9
images of the international applications pub-
lished and republished each week are available ES 776 0.7
from the collection on the international publica- BE 725 0.6
tion date. The searchable text of claims and AT 620 0.6
descriptions of published international applica- IN 611 0.6
tions is available from the collection as soon as
Other countries 3,782 3.4
possible after international publication (gener-
_______ ______
ally 2 to 3 days after the publication date).
110,065 100.0
The PCT Electronic Gazette is available at: _______ ______
www.wipo.int/pct/en/gazette/index.jsp
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PCT Newsletter – No. 03/2004 – March 2004
Developing countries. A total of 5,950 interna- in 2003 related were physics, human necessi-
tional applications originated from developing ties, chemistry and metallurgy, and electricity.
countries, an increase of 11% compared to The chart below shows the breakdown of PCT
2002. The highest number were from the applications published in 2003 according to the
Republic of Korea (2,947), China (1,205), eight main technical fields (sections) of the
India (611), South Africa (376), Singapore (313), International Patent Classification (IPC) (for
Brazil (221) and Mexico (123). Of particular information on the specific contents of each
significance was the increase in applications section, consult the IPC on the WIPO website
filed by applicants from India (27.3%) and the at: www.wipo.int/classifications/fulltext/
Republic of Korea (15.5%). new_ipc/index.htm). The main “class” under
which PCT applications were published (that
PCT-EASY filings. Of the 110,065 international is, the next level of detail after “section”) was
applications received in 2003, the request part “Medical/vetinary science; hygiene” (for ex-
of 49,054 (44.6%) were prepared using the ample diagnostic apparatus such as
PCT-EASY software. endoscopes, computer tomographs, artificial
Electronic filings. During 2003, it was possible heart and kidneys, prostheses, medicinal
to file international applications electronically preparations), with 14,195 of the PCT applica-
only with the European Patent Office (RO/EP), tions published in 2003 being classified under
or the National Institute of Industrial Property that class, which falls under the section “Hu-
(France) (RO/FR) as receiving Offices, or for man necessities.”
applicants registered under the PCT-SAFE
pilot, with the International Bureau as receiving
Office (RO/IB). During that year, the Interna-
tional Bureau received 634 international appli-
cations filed electronically with those Offices
(that is, 575 with RO/EP, 42 with RO/FR and
17 with RO/IB). (It is recalled that it is now
possible to file international applications elec-
tronically also with the National Board of Pat-
ents and Registration (Finland), the Korean
Intellectual Property Office and the Spanish
Patent and Trademark Office as receiving
Offices, and now in the case of any applicant,
with RO/IB.)
International Bureau as receiving Office. Use of Technical fields under the IPC:
the RO/IB continued to increase in 2003. The
RO/IB received 6,487 international applications, A Human necessities
an increase of 10.7% compared to 2002. B Performing operations; transporting
Applications were filed by applicants from 67 C Chemistry; metallurgy
countries in 2003, compared to 59 countries in D Textiles; paper
2002. Of those 6,487 applications, 12.5% E Fixed constructions
benefited from the safeguard procedure under F Mechanical engineering; lighting,
PCT Rule 19.4, under which international heating, weapons, blasting
applications are transmitted from another
G Physics
receiving Office to the International Bureau in
its capacity as receiving Office while retaining H Electricity
their initial filing date (for example, where they
Top PCT users. The applicants in whose
have been filed with a "non-competent" receiv-
names the most international applications were
ing Office, or where they have been filed in a
published during 2003 were:
language which is not accepted by the other
Office). • Koninklijke Philips Electronics N.V.
(Netherlands)
Fields of technology. The main fields of tech-
nology to which the PCT applications published • Siemens Aktiengesellschaft (Germany)
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PCT Newsletter – No. 03/2004 – March 2004
• Matsushita Electric Industrial Co., Ltd. of record, or if both the purported agent
(Japan) and the agent of record are employees of
the applicant or, if there is more than one
• Robert Bosch GmbH (Germany)
applicant, of the common representative;
• Sony Corporation (Japan) or in case of doubt as to the agent’s
• Nokia Corporation (Finland) entitlement to act;
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PCT Newsletter – No. 03/2004 – March 2004
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PCT Newsletter – No. 03/2004 – March 2004
there will also be changes in the amount — for a search on behalf of a national Office
payable in KRW as well as in the equivalent (BE, FR, LU, NL, TR):
amounts payable in CHF, EUR and USD for an
(full benefit) EUR 945
international search carried out by the Korean
(partial benefit) EUR 236.25
Intellectual Property Office, as indicated in
Table I(b).
As from 1 April 2004, there will be a change in
(Updating of PCT Applicant’s Guide, Vol. I/B, the amount of the additional search fee payable
Annex D (EP, ES, KR, SE and US)) to the Korean Intellectual Property Office as
International Searching Authority, as indicated
Fees relating to the international search below:
(European Patent Office and Korean
additional search fee: KRW 225,000
Intellectual Property Office)
(Updating of PCT Applicant’s Guide, Vol. I/B,
There has been a change in the conditions for Annex D (EP and KR))
refund and in the amounts of refund of the
search fee payable for an international search Preliminary examination fee and fees
carried out by the European Patent Office, as relating to the international preliminary
indicated below (other conditions not indicated examination (Korean Intellectual Property
have not changed): Office)
conditions for refund and amount of refund As from 1 April 2004, there will be a change in
of the search fee: the amount payable in KRW for an international
preliminary examination carried out by the
Extents to which the search fee shall be Korean Intellectual Property Office, as indi-
refunded when the Authority benefits from cated in Table II, as well as a change in the
an earlier search in carrying out international amount of the additional preliminary examina-
search: tion fee, as indicated below:
additional preliminary
— for a European search (Art. 78(2) EPC):
examination fee: KRW 225,000
(full benefit) EUR 690
(partial benefit) EUR 172.50 (Updating of PCT Applicant’s Guide, Vol. I/B,
Annex E (KR)).
— for an international search (PCT
Art. 15(1)) (international application filed
European Patent Office: Clarification of
on or after 1 January 2004):
Search and Examination Restriction
(full benefit) EUR 1,550 Criteria
(partial benefit) EUR 387.50
The European Patent Office (EPO) has clari-
— for an international search (PCT fied the search and examination restriction
Art. 15(1)) (international application filed criteria for international applications for which it
before 1 January 2004): is not competent to carry out international
search/international preliminary examination,
(full benefit) EUR 945
according to the date of filing of the interna-
(partial benefit) EUR 236.25
tional applications or the demands, as the case
— for an international-type search (PCT may be, as follows:
Art. 15(5)): International applications for which the
(full benefit) EUR 945 International Searching Authority is not
(partial benefit) EUR 236.25 competent:
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PCT Newsletter – No. 03/2004 – March 2004
Office where such applications contain one or PCT applications a year. Prior to the entry into
more claims relating to: force of the 1 January 2004 amendments to
the PCT Regulations, it was our practice not to
• business methods, and the international designate US in international applications,
application was filed on or after 1 March 2002;
given that we always file in US first via the
• biotechnology, and the international applica- national route. Now that US is automatically
tion was filed between 1 March 2002 and designated in all international applications filed
31 December 2003. since 1 January 2004, our practice will be to
maintain that designation, rather than withdraw
International applications for which the it, in respect of each international application
International Preliminary Examining Author- concerned. Also, given that for the purposes of
ity is not competent: the US designation the inventor(s) must be the
International applications filed—by a national or applicant(s), we will indicate the inventors as
a resident of the United States—with the United applicants for the US designation in the re-
States Patent and Trademark Office or the quest. However, the only applicant/inventor in
International Bureau as receiving Office, where respect of a number of international applica-
such applications contain one or more claims tions that are to be filed is not a national of, and
relating to: no longer resides in, a PCT Contracting State.
Will this cause any problems for the application?
• business methods, and the demand was
filed on or after 1 March 2002; A: With the automatic designation of US in all
international applications filed since 1 January
• biotechnology, and the international applica- 2004 (see amended PCT Rule 4.9(a)), all
tion was filed before 1 January 2004;
inventors should be indicated as applicants.
• telecommunications, and a demand is filed You are therefore correct to indicate the inven-
before 1 July 2004. tors as applicants if you are going to maintain
the US designation.
For further information, see also PCT Newslet-
ter No. 11/2003, page 7. However, you do not need to worry about the
country of residence and nationality of the
(Updating of PCT Applicant’s Guide, Vol. I/A, inventor in the case in question because,
Annex D (EP), Annex E (EP)) according to PCT Rule 18.3, if there are two or
more applicants, the right to file an international
Practical Advice application exists if at least one of them is
entitled to file an international application
Automatic designation of US: the conse-
according to PCT Article 9; that is, if at least
quences of the applicant/inventor being a
one of them is a resident or national of a
resident and national of a non-PCT Con-
PCT Contracting State. Since the corporate
tracting State
applicant is based in a PCT Contracting State,
Q: I work for a company based in the United the nationality and residence of the applicant/
States of America (US) which files several inventor is of no relevance.
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PCT Newsletter – No. 03/2004 – March 2004
10–11 March 2004 French PCT seminar for patent attorneys Centre Paul Roubier (Mrs. Audi)
Ecully (FR) WIPO speaker: Ms. Boutillon Tel: (33–4) 78 33 07 08
Fax: (33–4) 78 33 58 96
11 March 2004 English/ Epoline and PCT-SAFE workshop Swedish Patent and Registration Office,
Stockholm (SE) Swedish WIPO speaker: Mrs. Metcalfe PRV InterPat (Mr. David Holm)
Other speaker: Mr. Lindblom Tel: (46–8) 782 26 32
(European Patent Office) Fax: (46–8) 783 01 63
E-mail: david.holm@prv.se
16–17 March 2004 Finnish Course on the PCT system for Helsinki University of Technology,
Helsinki (FI) patent administrators Lifelong Learning Institute of Dipoli
WIPO speaker: Mrs. Metcalfe (Ms. Arja Andsten)
Tel: (358–9) 451 40 47
Fax: (358–9) 451 40 68
E-mail: arja.andsten@dipoli.hut.fi
Internet: www.dipoli.hut.fi
22–23 March 2004 English National Seminar on Patents, the Department of Industrial Policy and
New Delhi (IN) PCT and Commercialization of Promotion, Minstry of Commerce and
Inventions for the Information Industry (Mr. A.E. Ahmad)
Technology (IT) Industry Tel: (91–11) 23 01 17 14
WIPO speakers: Mr. Erstling and Fax: (91–11) 23 01 36 56
Mr. Sinha
Other speakers: See below*
*Other speakers: Mr. Kasper (Sughrue Mion PLLC, US), Mr. Goddar (Boehmert & Boehmert, DE), Mr. Reed (The Procter &
Gamble Company (US)) and Mr. Rao Coca (IBM Almaden Research Center, US)
24–25 March 2004 German Basic PCT seminar Forum Institut für Management GmbH
Cologne (DE) WIPO speakers: Mr. H.G. Bartels Tel: (49–6221) 500 500
and Mrs. Coeckelbergs Fax: (49–6221) 500 505
E-mail: Management@Forum-Institut.de
26 March 2004 English PCT seminar for patent attorneys on Management Forum Ltd
London (GB) the latest changes in the PCT Tel: (44–1483) 57 00 99
system Fax: (44–1483) 53 64 24
WIPO speaker: Mr. Matthes E-mail:
josephine.leak@management-forum.co.uk
29 March 2004 English PCT update seminar for patent Plougmann & Vingtoft A/S and
Copenhagen (DK) administrators H. Lundbeck A/S (Ms. Susanne Aalborg)
WIPO speaker: Mr. Reischle Tel: (45) 36 43 32 03
E-mail: SAA@LUNDBECK.COM
1 April 2004 English Presentation on the PCT at the 19th American Bar Association
Washington, D.C. (US) Annual Intellectual Property Law (Mr. Michael Winkler)
Conference Tel: (1–312) 988 56 39
WIPO speaker: Mr. Maassel Fax: (1–312) 988 56 28
e-mail: winklerm@staff.abanet.org
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PCT Newsletter – No. 03/2004 – March 2004
16–17 April 2004 English Basic PCT seminar for patent Franklin Pierce Law Center
Concord, New attorneys and patent administrators (Ms. Carol Ruh)
Hampshire (US) WIPO speaker: Mr. Maassel Tel: (1–603) 228 15 41, ext. 1108
Other speaker: Mr. Reed (The Fax: (1–603) 224 33 42
Procter & Gamble Company (US)) E-mail: cruh@piercelaw.edu
Internet:
www.piercelaw.edu/TreatySem/Treatsem.htm
21–22 April 2004 English Basic formalities seminar on the Management Forum Ltd
London (GB) Patent Cooperation Treaty (PCT) Tel: (44–1483) 57 00 99
WIPO speakers: Mr. H.G. Bartels Fax: (44–1483) 53 64 24
and Ms. Schwarz E-mail:
josephine.leak@management-forum.co.uk
22–24 April 2004 English Advanced PCT seminar for patent Patent Resources Group, Inc.
Naples, Florida (US) attorneys Tel: (1–434) 974 17 00
WIPO speaker: Mr. Maassel Fax: (1–434) 975 20 66
Other speaker: Mr. Reed (The
Procter & Gamble Company (US))
26–28 April 2004 English Basic PCT seminar for patent Patent Resources Group, Inc.
Naples, Florida (US) attorneys Tel: (1–434) 974 17 00
WIPO speaker: Mr. Maassel Fax: (1–434) 975 20 66
Other speaker: Mr. Reed (The
Procter & Gamble Company (US))
27 April 2004 French PCT presentation for patent Fondation Nationale pour le Droit de
Paris (FR) attorneys l’Entreprise (FNDE) (Mrs. Heuzé)
WIPO speaker: Ms. Boutillon Tel: (33–1) 42 66 18 19
Fax: (33–1) 42 66 17 37
E-mail: pheuze@fnde.asso.fr
30 April 2004 German PCT update seminar Forum Institut für Management GmbH
Munich (DE) WIPO speaker: Mr. H.G. Bartels Tel: (49–6221) 500 500
Fax: (49–6221) 500 505
E-mail: Management@Forum-Institut.de
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