PA 10/2017: Indicating that an international application is available for licensing

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I work in the mechanical engineering department of a university and we have developed a new piece of equipment for which we intend to file a PCT application.  In order to raise money for further research and development in our field of interest, we would like to make our invention available to industry by licensing it.  Is it possible to indicate somewhere in the application that we wish to make the invention available for licensing, and if so, can we specify the countries in which we would like to do this?

A:  Since January 2012, it has been possible to request the International Bureau (IB) to publish information on PATENTSCOPE concerning the applicant’s willingness to make their invention contained in a particular PCT application available to interested parties through licensing.  This service, which is free of charge, was introduced following a recommendation by the PCT Working Group in June 2010 to establish a system for promoting licensing. 

If you wish to have such information published, you should send a “licensing availability request” directly to the IB.  The best ways to do this are by:

You can also submit the licensing availability request in a letter to the IB, provided that you include all the required information.  The letter should preferably clearly indicate that it is a “Licensing availability request”.

When submitting your licensing availability request, you can, if you wish:

  • specify that you are willing to license the claimed invention in all PCT Contracting States, or you can specify the Contracting States in which you wish to license the claimed invention;
  • clarify whether you are willing to license the claimed invention for exclusive or non-exclusive use by the licensee; and
  • include any additional licensing terms.

You should include the contact details of the person to be contacted in the event of interest in a licensing agreement – this does not necessarily have to be the applicant(s) or agent named in the international application concerned.  The licensing availability request itself must, however, be signed by the agent or common representative of the international application.

The licensing availability request may be sent to the IB at any time from the date of filing of the international application until the expiration of 30 months from the priority date.  If you wish to send the licensing availability request at the time of filing, it should be properly labelled.  If filing the application using ePCT‑Filing, the easiest thing to do is to use the relevant ePCT Action, which will prompt you for all the required information and automatically render a licensing availability request that meets the requirements for the request to be posted on PATENTSCOPE.  If filing the application using PCT‑SAFE, you should attach the license availability request to the application as “Other” under “Accompanying items” and label it “Licensing availability request”. 

If the international application has already been filed at the time when you wish to submit your license availability request, you will have to wait until the IB has started processing the application, in order to ensure that it will be in a position to place the form or letter in the correct file. 

Please be aware that you can file multiple licensing requests or modify those already filed until the expiration of 30 months from the priority date.  If you do file multiple requests or modify existing requests, you must ensure that your latest request is always a self‑contained document, comprising complete information about any requests or modifications.  You can also request the IB to remove the licensing indications from PATENTSCOPE at any time during the international phase, or even during the national phase.  Once removed, the licensing request and the correspondence will, however, remain part of the file history available under the “Related Documents” tab in PATENTSCOPE.

Please note that if you are keen to announce licensing availability at a very early stage, you may wish to consider filing a request for early international publication as provided under PCT Article 21(2)(b).

Licensing indications are reflected in the bibliographic data relating to the particular application (under the “Bibliographic data” tab on PATENTSCOPE) but will not be part of the published international application itself.  There is a link between the licensing statement on the bibliographic data page and the content of the licensing availability request itself, allowing third parties to directly access its content.  The licensing availability request is also available under the “Documents” tab on PATENTSCOPE as a separate document. 

Potential licensees wishing to find international applications in relation to which indications have been submitted by the applicant concerning the availability of the claimed invention(s) for licensing purposes can do this by going to the “Field Combination” search at:

http://www.wipo.int/patentscope/search/en/structuredSearch.jsf

and checking the “Licensing availability box” provided.  The search criterion can also be used in combination/multi-field searches, so third parties can search for international applications containing licensing information where the claimed invention(s) relate(s) to a particular field of technology.  They can also subscribe to RSS feeds.  By doing this, their search results will be automatically updated in their RSS reader every Thursday, when any new PCT applications containing licensing information become available.

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