COVER STORY: THE FUTURE OF THE PCT

WIPO acts to repair

the PCT system
The PCT was designed to benefit applicants and offices
by minimising duplication in the patent system. More
than 30 years on, is it still up to the job?
Emma Barraclough reports

42 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

I
f yours is one of the 4.2 million patent applications pending around the world
you might agree that the global patent system is in trouble: despite the economic
downturn backlogs are mounting as patent offices begin to process applications
filed in the boom years. The slowdown in new applications offers little comfort to
patent officials – fewer applications and lower renewal rates mean less revenue for
offices, just when the backlogs are putting more pressure on resources than ever
before.
The PCT was designed to offer offices and applicants a solution by eliminating
unnecessary duplication of work, thereby allowing offices to work more efficient-
ly: a PCT applicant armed with an international search report and written opin-
ion gives examiners in one office the chance to reuse much of the work already
performed by counterparts overseas. It has proved popular with applicants (see
chart on page 46), not least because of the 30-month priority period that a PCT
application buys them.
Yet users and WIPO, the international organisation that administers the system,
agree that the PCT system is, if not in terminal decline, at the very least ailing. This
is not the fault of the PCT system, say WIPO officials, but of the way that offices
around the world are using it.
“The resulting PCT system has been extremely popular with applicants and
achieved great success in bringing together formal and procedural requirements of
States,” wrote WIPO staff in a document prepared for a meeting of the PCT work-
ing group in May. “If it has not been as effective in addressing [the challenges fac-
ing the international patent system] as its founders hoped, the main difficulties do
not stem from deficiencies in the international legal framework, but from the fact
that many national Offices (both as International Authorities and as designated
Offices) have chosen not to use it as it was intended.”

Writing a roadmap
When Francis Gurry was elected director-general of WIPO last year, he committed
the organisation to getting the PCT system back on track. WIPO staff drafted a
roadmap for doing so and urged member states to do their bit. At a meeting of the
PCT working group, IP offices of contracting states were given a checklist of tasks
including implementing their Treaty obligations fully; eliminating duplication with-
in their own offices, either directly or by providing better incentives for applicants

What the PCT offers

The PCT allows applicants to seek patent protection in a large number of countries by filing an
international patent application either with the applicant’s local patent office, with WIPO’s
International Bureau in Geneva or with regional patent offices such as the EPO and the African
Regional Industrial Property Organization.
Once filed, the international application undergoes an international search, which is carried out
by one of the patent offices appointed by the PCT Assembly as an international searching authori-
ty (ISA). The ISA then prepares an international search report and a written opinion on patentabili-
ty. If the inventor decides to proceed with the application then it, along with the international
search report, is published by the International Bureau.
By using the PCT system, the applicant is given up to 18 months to decide whether to seek
patent protection abroad. This gives the applicant the chance to assess the invention’s commercial
viability and its likelihood of being granted protection, to appoint local patent agents to process
the application in each country and to prepare necessary translations.

W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 4 3
 COVER STORY: THE FUTURE OF THE PCT
The US and the PCT
Charles Pearson, director, and Michael Neas, supervisory PCT legal examiner, Office of PCT Legal
Administration, tell Eileen McDermott about PCT operations at the USPTO.
What is the function of the Office of
PCT Legal Administration?
CP: We decide on petitions to revive
PCT applications, do training both
externally and internally, provide advice
and information within the office and
represent the USPTO at international
meetings. We get about 40,000 calls per
year at the PCT help desk [which pro-
vides information and assistance on the
PCT process]. There are about 28
employees working in the department.
Who does the search work?
CP: We outsource work to two private
companies – Cardinal Law Group and
Landon IP. Between 2006 and 2007,
we also used the Australian and
Swedish IP offices.
MN: We were using US patent exam-
iners prior to 2006, but our timeliness is
much better now. At one point, we were
getting 4% of cases out in 16 months of
the priority date. Now I think it’s about
80%. That’s a drastic turnaround. In
international meetings, WIPO has
acknowledged that the US has made
great strides in improving timeliness.
Doesn’t this affect quality?
CP: In the recent past, the USPTO’s
Office of Patent Quality Assurance has
reviewed all of the searches done by
the outside companies. As to what the
new administration might order, I can’t
really give my opinion on that. The
contractors have certainly played a
large part in reducing the backlog of
PCT work at the Office, but I know
there has been some criticism as to the
quality of outsourced work.
Dave Kappos mentioned in a recent talk
given at the IPO Annual Meeting that
there were plans being developed to
improve PCT operations – do you have
any more details about that yet?
CP: This is still in the infant stages, but
Director Kappos is working on creating a
task force to deal explicitly with PCT mat-
ters (see box). One of the plans is to
request a public hearing or forum to
improve the PCT. I expect you’ll see a
Federal Register Notice about it request-
ing written comments in the near future.
What is the relationship between the
patent prosecution highway (PPH) and
the PCT? Can duplication be better or
4 4 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
more easily avoided via the PPH? [The
PPH allows corresponding claims in the
office where the application was first
filed to be presented for accelerated
examination in an office of second filing].
CP: At the Trilateral offices working
group meeting in Vienna recently, the
Offices supported efforts to use PCT
work to support the PPH. I expect
something on that front in the foresee-
able future. Using the PCT in conjunc-
tion with the PPH should give major
benefits. Director Kappos has been a
strong supporter of this (see box).
At the WIPO meeting in Geneva in May,
the US suggested a long-term plan
whereby a patent approved in one
Office should be approved in another
unless an Office rejects it within a set
time frame. This was unpopular with a
lot of the contracting states. Do you
still believe this is a realistic goal?
CP: The WIPO meeting was a con-
tentious one. The developing countries
are suspicious of anything having to do
with harmonisation. So with the political
realities as they are, we’re going to have
to look at less far-reaching plans for
improvement. Given the fact that Francis
Gurry is relatively new in his role with
WIPO, we want to show support for him
and for WIPO. We’re hopeful that under
a new administration, steps will be taken
to move forward on improving the PCT.
What is your view of the roadmap pro-
posals and what are you doing to work
toward meeting them?
CP: Eliminating repetition of work is
almost a self-evident goal. Since con-
tractors do the searches right now,
there are different examiners working
on the same applications, which is not
ideal. We’re working toward integrat-
ing that via the PCT Task Force that
Director Kappos is developing. We also
support reducing the number of reser-
vations, although we can’t remove all
of them. For instance, we can only
accept PCT applications in English
because that’s required by statute, so
we have little flexibility to change that.
We’re working on other areas though.
The most important item in the
roadmap is perhaps the goal of achiev-
ing collaborative examination, which
our new director spoke about last fall at
the Trilateral meeting in The Hague.
In a blog post sent to USPTO employees on
September 21, Kappos revealed more about his
plans for improving PCT operations at the Office
A Report from Geneva
This week, I will be in Geneva, Switzerland,
leading the US delegation to the annual meet-
ing of the World Intellectual Property
Organization (WIPO) ....
I am certain that with 141 members, the
PCT offers the best and most comprehensive
framework to address the challenge of grow-
ing backlogs. In Geneva, we will be consider-
ing how PCT applications can be included in
worksharing efforts such as the Patent
Prosecution Highway (PPH). I hope to increase
participation in such projects so we can truly
see the benefits of worksharing.
To help accomplish this goal, I have estab-
lished a USPTO PCT Task Force. The task force
will examine our role as a PCT receiving office
and international searching and preliminary
examination authority. The task force is reach-
ing out to PCT applicants, large and small, to
solicit their input. We also will be publishing a
Federal Register Notice soliciting public com-
ment and will have one or more public meet-
ings seeking stakeholder views. My ultimate
aim is to integrate the PCT into all of our work-
sharing efforts.
As always, I welcome your thoughts and
suggestions as well.
Now that he’s the head of the Office,
we’re looking at this possibility more
fully. This would allow the Trilateral
Offices to work on an application
simultaneously in real time. The idea is
still in the formative stages, but we’ve
been discussing a pilot programme.
What has been the main barrier to imple-
menting such a system up to this point?
MN: Collaborative searching was part of
the original US PCT proposal. The main
barrier to implementing it right now is
probably the cost. The application fee
would be higher if multiple offices are
involved. So the pilot will show whether
the benefit would be worth the cost. The
whole point of the road map is to pro-
vide consistency and quality.
CP: We have to examine what’s
involved, but I’m really excited about
this possibility. Under this new admin-
istration, the PCT seems to be at the
forefront once again.

to avoid dual processing; ensuring that practices and work
products encourage work sharing and reduction of duplication
between different offices; and taking steps to ensure the avail-
ability of high quality search and examination reports.
The USPTO comes in for particular criticism from bureau-
crats in Geneva. Its decision to outsource PCT search work to
private companies (see interview opposite) affects the quality
of the searches to the extent that not even USPTO’s own exam-
iners take them seriously, say critics. As a result, patent exam-
iners often repeat the search stage from scratch once the appli-
cation enters the national phase, which means that a PCT
application no longer spells an opportunity to slash wasteful
repetition of work. It can also result in more immediate prob-
lems for applicants, says Justin Simpson, executive director of
inovia, a company that coordinates national stage filings for
PCT applicants. He says he has experienced situations where
relevant prior art discovered by the non-US international
search authority (ISA) was disregarded by the USPTO and
replaced by a far less relevant piece of prior art by the US
examiner. “Aside from the duplication of effort within the
USPTO, it can also leave the applicant in an awkward posi-
tion. The best way to ensure good quality patents is robust
prosecution based on the most relevant available prior art.
That doesn’t happen if the US examiner focuses on prior art
that is less relevant than the ISA uncovered,” Simpson says. “I
suspect that there is a lack of trust between patent offices as to
their relative abilities. It seems there is a ‘not searched here’
attitude that leads to a duplication of work.” That is a view
shared by Michael Brunner, a partner of Gill Jennings & Every
in London and secretary-general of the International
Association for the Protection of Intellectual Property (AIPPI):
“National patent offices often do not respect the work done in
the international phase,” he says.
COVER STORY: THE FUTURE OF THE PCT
Political problems
Although the PCT’s problems appear technical and, as such,
easy to fix, at the heart of them are a range of complex, inter-
twined political concerns relating to work sharing, harmonisa-
tion and bilateral deals that have dogged the international IP
system for a decade.
Harmonisation by the back door
The rift between developed countries – who, in general,
want a greater degree of international patent harmonisa-
tion to ease the regulatory burden on patent applicants –
and developing countries – many of whom oppose what
they see as an attempt by rich countries to impose inappro-
priate patent systems on them – has led to something of an
impasse on many issues at WIPO. The PCT is no exception.
When WIPO officials discussed their draft road map with
the PCT working group in May, many developing countries
suspected it was an attempt to introduce substantive patent
law harmonisation through the back door. One official
admits that the organisation had not been sensitive enough
to their concerns, but says that arguments set out in a doc-
ument submitted by the US delegation did little to improve
the tense atmosphere. The USPTO had proposed reforming
the PCT so that an international application would auto-
matically issue as a national patent if it had received a pos-
itive international report on patentability unless a national
office issued a notification of refusal within a specified peri-
od of time.
“Developing countries saw that document, and the lan-
guage in the WIPO document, and the whole thing ended in a
big mess,” the WIPO official says.
Although the US proposal was killed off during the meet-
ing, WIPO has had to battle scepticism from developing coun-
W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 4 5
 COVER STORY: THE FUTURE OF THE PCT

Mapping the patent prosecution highways

Trend in PCT filings As developed countries lost confidence
in WIPO’s ability to give the lead on
175,000 improving the global patent system for
applicants, increasing numbers of them
150,000 decided to take the initiative by negotiat-
ing bilateral and plurilateral deals. The
125,000 rapid expansion of patent prosecution
highways (PPH) that now stretch
100,000 between IP offices including those in the
US, UK, Japan, Germany, Denmark,
75,000 Hungary and the EPO are one example.
Work-sharing initiatives in ASEAN and
50,000 South America are another. But such
deals risk sidelining WIPO and the PCT,
25,000 especially since PCT applications are, so
far, ineligible for inclusion in the PPH
0 process, which allows corresponding
1978 1980 1985 1990 1995 2000 2005 2008
claims in the office where the application
was first filed to be fast tracked in an
Source: WIPO statistics database, April 2009 office of second filing. Given that WIPO
relies on PCT income it has a keen inter-
Note: Counts are based on the international filing date.
est in ensuring that the system remains
tries about the final destination of the PCT roadmap. In popular with users and is not bypassed by bilateral deals
August, Claus Matthes of WIPO’s PCT International between national offices. For officials in Geneva, the growth
Cooperation Division took part in a debate in India’s of the PPH shows that the PCT is not working as intended: if
Economic Times in which he denied that PCT reform was it was, such initiatives would not be needed.
designed to remove flexibilities under the TRIPs Agreement. WIPO particularly dislikes the decision by national offices to
His opponent, Y K Hamied, managing director of Indian exclude PCT applications from the process. “It shows that PCT
generic drugs company Cipla, said he strongly subscribed to work is perceived as less good than work done by national
the view that the reform of the PCT “is an attempt to under- offices in direct filings,” says one WIPO official. It was the trig-
mine the sovereign rights of the Indian government to make ger for Gurry to launch his PCT roadmap to see what needs to
laws to suit its domestic needs”. be done with the PCT to fix the perception of low quality.

46 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M

Receiving office share of total PCT
filings in 2008 (%)
International KIPO: 4.8%
Bureau: 5.5% SIPO: 3.7%
USPTO: 31.9%
JPO: 17.2%
Source: WIPO statistics database (the figures for 2008 are provisional)
On September 22, Gurry told the WIPO General
Assemblies that PCT roadmap “aims to bring all these ini-
tiatives ultimately under the multilateral umbrella of the
PCT”. That aim may be easier to achieve after representa-
tives of the world’s three biggest offices – the JPO, EPO and
USPTO – agreed in principle at a symposium in Geneva less
than a week before to integrate PCT work products into their
PPH projects. Pilot projects will start in early 2010. Such a
move will also make it easier for the EPO to take part in PPH
COVER STORY: THE FUTURE OF THE PCT
Patent filings coming via the PCT
route in 2007 (%)
EPO: 55.6%
Rest of the
world: 18.8%
EPO: 18.1%
JPO: 13.6% USPTO: 12%
Source: JPO, EPO, USPTO
programmes. Given that more than half of the applications it
handles originate from the PCT (see chart above), a policy of
excluding PCT work from patent prosecution highways
risked leaving it stranded on the roadside. As some of the
EPC’s own member states – including Hungary, Germany
and the UK – had signed up to PPHs independently, thereby
giving themselves a competitive advantage in the search for
patent business, the EPO’s potential sidelining looked partic-
ularly unfortunate.
W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 4 7
 COVER STORY: THE FUTURE OF THE PCT

Work sharing worries
Although the EPO is regarded by WIPO as something of a role
model when it comes to implementing PCT work into its busi-
ness model, the EPO has internal reservations about work
sharing that could stymie efforts towards more of it at an
international level. The Office’s Administrative Council (made
up of representatives of EPO member states) thrashed out a
plan for a European Patent Network and a utilisation project
more than three years ago to encourage sharing of work prod-
ucts between examiners in the EPO and those in its member
state patent offices, but its discussions were sensitive and pro-
tracted. The Office, concerned to maintain its reputation for
quality, is likely to support the PCT only if the search reports
and written opinions prepared by examiners in other offices
are deemed to be sufficiently reliable.
The future of the PCT
WIPO staff are now preparing a new study on the PCT to deal
with some of the concerns raised at the meeting of its working
group in May – particularly by developing countries. The
report will outline the background to the need to improve the
functioning of the PCT system, identify the challenges facing
the PCT system and their causes, and consider the impact of
the proposed options. This will be presented to the working
group early next year. Gurry, who was previously deputy
director in charge of patents at WIPO, will be succeeded by
James Pooley, a US patent attorney, on December 1. The for-
mer Morrison & Foerster partner and AIPLA president is
highly regarded and is expected to drive forward PCT reform.
If WIPO can find renewed vigour under Gurry’s leadership
and assuage the concerns of developing countries it may be
able to boost the effectiveness of the PCT. This, in turn, should
help offices to deal with the backlog of applications – a back-
log that Gurry last month told the General Assemblies was
“unsustainable”.
That the USPTO is now being led by David Kappos (who,
while patent counsel at IBM, last year oversaw the company’s
decision to file more than 600 PCT applications) should also
give renewed impetus for the PCT. Kappos has already told
USPTO staff that he will set up a task force to consider its role
as a receiving office and international searching and prelimi-
nary examination authority (see interview). But in the long-
term, even a reinvigorated system may not be enough to enable
patent offices around the world to deal with growing patent
pendency. “Ultimately what we really need,” says the AIPPI’s
Michael Brunner, “is a truly international searching authority
where offices search in all the major languages and contribute
to the process.” ■

Top PCT filing firms revealed

For the first time, Managing IP lists the patent
firms filing the most PCT applications in the WORLDWIDE
RANKING PCT APPS FIRM NAME COUNTRY
14 biggest markets 1 839 Fish & Richardson PC US
2 687 Unitalen Attorneys at Law China

T
he tables listing the top PCT filers published in this arti- 3 681 inovia US
cle rank firms according to the number of PCT applica- 4 589 Townsend and Townsend US
tions that they filed that were due for national stage and Crew LLP
entry during 2009. 5 550 Shiga International Patent Office Japan
The tables are based on details of PCT applications pub- 6 495 Deqi Intellectual Property Law China
lished on WIPO’s website. To compile the tables, PCT appli- Corporation
cations with a priority date between July 1 2006 and June 7 490 Foley & Lardner LLP US
30 2007 were extracted. These correspond to applications 8 449 YP Lee, Mock & Partners South Korea
due to enter the national phase from January 1 to December 9 437 Schwegman Lundberg Woessner US
31 this year. 10 436 Knobbe Martens Olson & Bear US
Once extracted, these applications were sorted accord- 11 434 Marks & Clerk LLP UK
ing to the law firm or patent agency that filed the PCT 12 409 KBK & Associates South Korea
application, based on the “agent name” and “agent 13 390 Aoyama & Partners Japan
address” categories in the PCT form. A manual checking 14 359 Blakely Sokoloff Taylor & Zafman US
process ensured that all cases filed by each firm were 15 350 Eikoh Patent Firm Japan
included, even where it used different names or addresses 16 329 Vereenigde Netherlands
during the period in question. 17 322 Harness Dickey & Pierce US
The firms are listed in order of the number of applica- 18 319 Harakenzo World Patent Japan
tions filed in their jurisdiction. Firms with offices in more & Trademark
than one country may be included in the table in each 18 319 Fukami Patent Office Japan
jurisdiction. 20 311 Brinks Hofer Gilson & Lione US
The overall table ranks the firms with the most PCT appli-
cations worldwide.
Managing IP acknowledges the help of inovia in com-
piling and verifying the data on which the tables are based.
In the interests of full disclosure, comparable statistics details of the number of PCT applications they will introduce
relating to the number of PCT applications inovia will to the national phase. However none did so.
introduce into the national stage this year are included in The tables are provided for readers’ information only.
the relevant tables. Managing IP does not recommend or endorse any particular
Managing IP also invited other service providers to submit firms for PCT or other work.

48 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

AUSTRALIA
RANKING PCT APPS FIRM NAME

1 236 Griffith Hack

2 221 Davies Collison Cave

3 107 FB Rice & Co

4 95 Shelston IP

5 94 Phillips Ormonde & Fitzpatrick

6 92 Spruson & Ferguson

7 68 Cullen & Co

8 64 Fisher Adams Kelly

8 64 Freehills Patent & Trade Mark Attorneys

10 58 Wrays

W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 4 9
 COVER STORY: THE FUTURE OF THE PCT

CANADA
RANKING PCT APPS FIRM NAME

1 165 Smart & Biggar

2 160 Bereskin & Parr

3 155 Borden Ladner Gervais LLP

4 152 Ogilvy Renault LLP

5 127 Gowling Lafleur Henderson LLP

6 77 Husky Intellectual Property Services

7 70 Ridout & Maybee LLP

8 65 Oyen Wiggs Green & Mutala LLP

9 56 MBM Intellectual Property Law LLP

10 53 BCF LLP

5 0 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

CHINA
RANKING PCT APPS FIRM NAME
FRANCE
RANKING PCT APPS FIRM NAME

1 687 Unitalen Attorneys at Law 1 221 Cabinet Regimbeau

2 495 Deqi Intellectual Property Law Corporation 2 205 Cabinet Lavoix

3 235 Beijing Tongdaxinheng Intellectual 3 198 Cabinet Plasseraud

Property Agency Ltd
4 176 Cabinet Beau De Lomenie
4 172 Kangxin Partners
5 162 Marks & Clerk France
5 165 Beijing Cataly IP Attorney at Law
6 106 Santarelli
6 115 AFD China Intellectual Property Law Office
6 106 Cabinet Germain & Maureau
7 109 Guangzhou Scihead Patent Agent Co
8 89 Saint-Gobain Recherche
8 108 China Science Patent & Trademark Agent Ltd
9 88 Brevalex
9 83 Leader Patent & Trademark Firm
10 72 Cabinet Laurent & Charras
9 83 China Patent Agent (HK) Ltd

52 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

GERMANY
RANKING PCT APPS FIRM NAME

1 258 Isenbruck Bösl Hörschler Wichmann LLP

2 193 Epping Hermann Fischer

3 175 Boehmert & Boehmert

4 158 Mitscherlich & Partner

5 150 Grünecker, Kinkeldey, Stockmair

& Schwanhäusser

6 138 Kutzenberger & Wolff

7 111 Meissner Bolte

7 111 Reitstötter, Kinzebach & Partner

9 107 Cohausz & Florack

10 106 Witte, Weller & Partner

ISRAEL
RANKING PCT APPS FIRM NAME

1 240 Ehrlich & Fenster

2 175 Reinhold Cohn and Partners

3 126 Dr Mark Friedman Ltd

4 104 Sanford T Colb & Co

5 77 Pearl Cohen Zedek Latzer

6 74 Luzzatto & Luzzatto

7 56 Webb & Associates

8 47 Dr Eyal Bressler Ltd

9 44 Appelfeld Zer Fisher

10 30 Wolff, Bregman and Goller

54 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

ITALY
RANKING PCT APPS FIRM NAME
JAPAN
RANKING PCT APPS FIRM NAME

1 135 Studio Torta 1 550 Shiga International Patent Office

2 133 Barzanò & Zanardo 2 390 Aoyama & Partners

3 350 Eikoh Patent Firm

3 125 Bugnion
4 319 Harakenzo World Patent & Trademark
4 110 Jacobacci & Partners
5 319 Fukami Patent Office
5 86 Modiano & Associati
6 309 Miyoshi & Miyoshi
6 72 Notarbartolo & Gervasi
7 279 Soei Patent and Law Firm
7 66 Società Italiana Brevetti
8 267 Seiwa Patent & Law

8 55 APTA 9 265 Maeda Patent Office

8 49 GLP 10 258 Sakai International Patent Office

10 47 Bianchetti Bracco Minoja 11 256 Suzuye & Suzuye

12 253 Itoh International Patent Office

12 199 Wakabayashi Patent Agency

14 185 Ohtani Patent Office

15 173 Washida & Associates

W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 5 5
 COVER STORY: THE FUTURE OF THE PCT

KOREA
RANKING PCT APPS FIRM NAME

1 449 YP Lee, Mock & Partners

2 409 KBK & Associates
3 203 KJ Lee International Patent
& Trademark Office
4 194 You Me Patent and Law Firm
5 147 Sunyoung International Patent & Law Firm
6 130 FirstLaw Lee & Ko
7 126 C & S Logos Patent and Law Office
8 118 Park, Kim & Partner
9 104 Muhann Patent & Law Firm
10 95 S&IP Patent & Law Firm

NETHERLANDS
RANKING PCT APPS FIRM NAME

1 329 Vereenigde
2 176 Nederlandsch Octrooibureau
3 106 Arnold & Siedsma
4 62 Exter Polak & Charlouis BV
5 57 De Vries & Metman
6 48 Algemeen Octrooi- En Merkenbureau
7 47 Patentwerk BV
8 22 Howrey LLP
9 18 Deltapatents BV
10 17 Akzo Nobel NV

56 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT

SWEDEN
RANKING PCT APPS FIRM NAME
SWITZERLAND
RANKING PCT APPS FIRM NAME

1 177 Awapatent AB 1 73 Isler & Pedrazzini AG

2 129 Valea AB 2 37 André Roland SA

3 126 Albihns AB 3 33 Rentsch & Partner

4 93 Brann AB 3 33 Frei Patentanwaltsbüro AG

5 74 Groth & Co KB 5 31 Bohest AG

6 60 Bjerkéns Patentbyrå KB 6 28 Schmauder & Partner AG

7 56 Aros Patent AB 7 27 E Blum & Co AG

8 49 Ehrner & Delmar Patentbyrå AB 7 27 Troesch Scheidegger Werner AG

9 47 Kransell & Wennborg KB 9 23 Hepp Wenger Ryffel AG

10 44 Zacco Sweden AB 9 23 GLN Gresset & Laesser Neuchâtel

10 44 Bergenstråhle & Lindvall AB

FORTHCOMING EVENTS
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>>> LES US and Canada Annual Meeting,

San Francisco, October 18–22

>>> ASIPI XVII International Congress,

Lima, October 25–28

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Washington, October 26–28

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>>> FICPI-China Symposium 2009,

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London, March 24–26 2010

58 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
COVER STORY: THE FUTURE OF THE PCT

UNITED KINGDOM
RANKING PCT APPS FIRM NAME

1 434 Marks & Clerk LLP

2 167 Murgitroyd & Company

3 160 Page White & Farrer

4 154 Mewburn Ellis LLP

5 147 Gill Jennings & Every LLP

6 141 AA Thornton & Co

7 133 Boult Wade Tennant

8 129 Harrison Goddard Foote

9 126 Frank B Dehn & Co

10 123 Barker Brettell LLP

11 113 Kilburn & Strode

12 110 Reddie & Grose

12 110 D Young & Co

14 99 Urquhart-Dykes & Lord LLP

15 98 Carpmaels & Ransford

W W W. M A N A G I N G I P. C O M O C T O B E R 2 0 0 9 5 9
 COVER STORY: THE FUTURE OF THE PCT

UNITED STATES
RANKING PCT APPS FIRM NAME

1 839 Fish & Richardson PC

2 681 Inovia
3 589 Townsend and Townsend and Crew LLP
4 490 Foley & Lardner LLP
5 437 Schwegman Lundberg Woessner
6 436 Knobbe Martens Olson & Bear
7 359 Blakely Sokoloff Taylor & Zafman
8 322 Harness Dickey & Pierce
9 311 Brinks Hofer Gilson & Lione
10 270 Baker Botts LLP
11 260 Greenberg Traurig
12 239 Nixon Peabody LLP
13 237 Wolf, Greenfield & Sacks
14 226 Banner & Witcoff
15 217 Fulbright & Jaworski LLP
16 216 Morrison & Foerster LLP
17 206 Cooley Godward Kronish LLP
18 198 Kenyon & Kenyon LLP
19 189 Edwards Angell Palmer & Dodge LLP
20 187 Perkins Coie LLP
20 187 Lowe Hauptman Ham & Berner

6 0 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
 COVER STORY: THE FUTURE OF THE PCT
The story behind China’s PCT rise
Chinese companies have become big users of the
PCT. Peter Ollier considers which law firms are
advising them and whether these companies could
be making more use of the international phase
s many IP firms in the US and Europe contemplate redun-
A dancies and office closures, the prospect of 40% growth in
2009 must seem like a dream. But that is the confident pre-
diction of Yang Shengping, partner, patent attorney and vice-
president of Beijing Tondaxinheng Intellectual Property Agency.
Founded in 2004, this firm is one of a group benefitting from
the rapid rise in PCT applications coming from China.
Chinese telecommunications company Huawei has come to
symbolise this rise. The firm topped WIPO’s PCT rankings in
2008 after filing 1,737 applications (eight more than
Panasonic). Although this still falls far short of IBM’s 4,186
filings at the USPTO last year, the growth demonstrates the
ambition of China’s companies and government, which has
urged domestic firms to seek patent protection abroad.
Samson Yu, a partner of Kangxin Partners, another of the
firms that has captured a sizeable chunk of China’s outbound
PCT work, says that SIPO wants Chinese companies to file
50,000 PCT applications by 2015, up from 6,089 in 2008.
Yes the impressive data may not be conclusive proof of
Chinese companies’ commitment to overseas expansion.
Government subsidies on offer to businesses that file for IP pro-
tection abroad may be distorting the system, and the apparent
reluctance on the part of some companies to convert their PCT
applications into national and regional phase filings suggest
that the statistics may not be as dramatic as they first appear.
New firms for new clients
When it comes to the law firms advising China’s PCT filers,
the clear number one is Unitalen, which was established in
1995. At the time, only a small number of firms were permit-
ted to work with foreign clients, leaving the rest to focus on
building a strong domestic client base. Unitalen was awarded
a licence to provide services to foreign clients in 2003. It is
now one of China’s largest IP firms and has about 500 staff,
120 of whom are patent attorneys.
Other firms have followed a similar pattern of consolidating
a domestic client base and then helping the companies to expand
internationally. Guangzhou Scihead Patent Agent was founded in
1986, but did not receive a foreign filing licence from SIPO until
2000. The second-ranked firm in our list is Deqi, which began
life in 1984 as the patent service centre of the Ministry of
Information Industry. In 2001 it was relaunched under the Deqi
name and won the right to handle overseas work one year later.
Having a strong regional network is also important in win-
ing PCT work, given that many of China’s most innovative
companies are based outside of the capital. According to the
OECD Compendium of Patent Statistics 2008, Guangdong
was the top-ranked region among all developing countries for
PCT applications between 2003 and 2005, with more than
2,300 PCT filings. This is more than Beijing (1,074) and
Shanghai (934) combined and helps to explain the high rank-
ing of Guangzhou Scihead Patent Agent.
In it for the money?
One barrier for companies based in developing countries when
it comes to using the international patent system is cost. That
6 2 O C T O B E R 2 0 0 9 W W W. M A N A G I N G I P. C O M
is equally true for businesses in China. Says Yang of Beijing
Tondaxinheng: “I think the PCT is relatively expensive for
Chinese companies, especially for smaller companies.”
To help companies cope with the high costs of filing abroad,
many local governments, under pressure from officials in
Beijing to boost domestic innovation, have set up a system of
subsides for foreign filing. These vary from region to region but
are often Rmb10,000 ($1,460) for each international filing.
“This is a lot of money” says Yu of Kangxin Partners.
According to data obtained by Managing IP, some provinces go
even further. Hubei province, for example, offers Rmb30,000
for successful international applications. There is no doubt that
these subsidies have helped smaller Chinese companies maintain
their overseas filing rates during the economic slowdown. “I
think that they play a role. How much of a role they play real-
ly depends on the nature of the company you are talking
about,” says Elliot Papageorgiou, partner of Rouse in Shanghai.
Would removing the subsidies limit the growth of PCT
applications coming from China? Probably not, says Yang,
who points out that the main filers – Huawei, ZTE, China
Mobile and Datang – are big Chinese companies that are
determined to expand internationally and do not need subsi-
dies to encourage them. Xu Tianyi, a patent attorney with
Unitalen, agrees: “I don’t think the subsidies play an important
role in the decision making of Chinese companies.”
The conversion problem
The way in which Chinese companies convert their technologies at
the national phase depends on the technology that they cover. Xu
says that patents on telecommunications technology, for example,
which form the majority of China’s PCT applications, are filed in
the US, Japan, the EPO, Korea, India and Japan. Huawei some-
times adds Brazil to that list, says Xu. Pharmaceutical and chemi-
cal inventions are filed in the same countries and in south-east
Asia, particularly Malaysia and Vietnam.
But many lawyers in China are sceptical of how extensive-
ly Chinese companies convert their PCT applications. As
Papageorgiou points out: “Filing a PCT application is only the
first step. But I suspect many Chinese companies don’t take it
further than this.”
His suspicions have some basis. EPO statistics show that
about 30% of Chinese PCT applications enter the regional
phase at the EPO – a figure that a spokesperson at the Office
describes as “relatively constant”. This contrasts with around
60% from the US and Japan.
Data from WIPO confirms that Chinese companies are not
converting their PCT applications at the same rate as foreign
rivals. In the Organisation’s 2008 Review of developments and
performance, China’s conversion rate of international applica-
tions to national phase entries is only 0.86. This means that it files
only 0.86 national phase entries for each PCT international filing.
Of China’s rivals at the top of the PCT filing list, the US has a ratio
of 2.5, Japan 2.48, Germany 2.59 and Korea 1.55. The other
countries that fall under one national phase entry for each appli-
cation are the Russian Federation, Colombia and Algeria.
As ever with patent statistics, by the time they are compiled
and presented they are out of date, which means that Chinese
companies may have already increased their conversion rate. But
it is likely that Yang and his patent attorney counterparts in China
still face the challenge of persuading more Chinese companies not
only to file PCT applications, but also to take full advantage of
them. ■