Progress of PCT Receiving Offices towards participation in the DAS system

(Update:  Forty-two Patent Practitioners have written to Director Vidal about this.  See blog article.)

There is a recent development that the RO/TR (PCT Receiving Office of the Turkish Patent and Trademark Office) will become a Depositing Office in the WIPO DAS system, with effect from June 1, 2022.  Turkey’s decision to be trendy, modern and up-to-date in this regard brings to twenty-four the number of patent offices around the world whose Receiving Offices have become Depositing Offices in the DAS system.  

This raises the natural question of what the progress is of the various PCT Receiving Offices in this important area.  Which PCT Receiving Offices are trendy, modern and up-to-date?  Which PCT Receiving Offices are laggards?  It is instructive to rank the Receiving Offices based on how many applications get filed there, and then to check to see which of those ROs have taken the step of becoming a Depositing Office in the DAS system.  Here is how things stand as of the present. (Preview: The USPTO fares poorly in this assessment.)

This table lists the top six Receiving Offices based upon the number of PCT applications filed therein during the year 2019.  These six ROs between them accounted for ninety percent of all of the PCT applications filed in the year 2019.  Predictably, these six ROs are the IP5 plus the International Bureau.  (The IP5 is defined the group of five patent offices that are the five highest-volume patent offices, and it accounts for some ninety percent of all of the patent filing activity in the world.)

Receiving Offices denoted in green are the trendy, modern and up-to-date Receiving Offices, which in this context means ROs that are Depositing Offices in the DAS system.  Receiving Offices denoted in red are the Receiving Offices that have not taken the step of becoming Depositing Offices in the DAS system.  I think of such Receiving Offices as “laggards” in this respect.  

RO/CN 60997
RO/US 56232
RO/JP 51652
RO/EP 37998
RO/KR 18885
RO/IB 12901

As you can see, the highest-ranked Receiving Office that is a laggard is the Receiving Office of the USPTO (RO/US).  Other members of the IP5 that are laggards are RO/JP and RO/KR.  

The need for an RO to become a Depositing Office is tied to how often an applicant finds the need to claim priority under the Paris Convention from a PCT application that has been filed in that RO.  To a first approximation, this need is likely to be roughly linearly related to the number of such filings.  Thus the need is probably the greatest for the highest-ranked RO in this table, and the need presumably falls off in rough proportion to the number in the second column of this table.  So for example the failure of RO/KR to have become a Depositing Office is perhaps not as detrimental to applicants as the failure of RO/US or RO/JP to have become a Depositing Office (by which we mean that 18K is a much smaller number than 56K or 51K).

Thirty-One Patent Practitioners wrote a letter to the Commissioner for Patents dated February 22, 2020 asking that the USPTO cause the RO/US to become a Depositing Office in the DAS system.  You can see the letter here.  You can see the response from the USPTO here;  unfortunately the Thirty-One Patent Practitioners did not get their “ask”.

Now that we have a new USPTO Director, we are going to try again.  At least twenty-five patent practitioners have already signed a letter to Director Vidal, and the letter will get sent on Tuesday, April 26th, 2022, once again asking that the USPTO cause the RO/US to become a Depositing Office in the DAS system.  You can see the letter here.  The letter has eight PCT-related “asks” of which this is number 8.  Maybe you would like to look at the other seven “asks”, and maybe you would like to sign this letter!  The letter will close for signatures on Monday, April 25th.

If you choose to sign the letter, what company will you be keeping?  Collectively these twenty-five signers, either personally or through their law firms or corporations, have in the past ten years:

  • filed over 7000 patent applications at the USPTO;
  • filed over 900 PCT applications in the RO/US;
  • prosecuted over 5000 US patents to issuance as national-stage entries from PCT applications;  and
  • paid over $15 million in fees to the USPTO.

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