January 1, 2012

WIPO’s New Licensing Promoting Service

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The World Intellectual Property Organization (WIPO) recently announced a new service that will come into effect as of January 2012, whereby PCT applications that are offered for licensing may be listed under such category on the WIPO website.

As of January 2012, applicants who are interested in licensing their inventions that are subject of PCT applications can request the International Bureau (IB)1 to make this licensing information available on WIPO’s PATENTSCOPE website2, which will host a register of PCT applications that are available for licensing.

This appears to be WIPO’s first concrete attempt to promote the ever-growing patent commercialization landscape, which American Express estimated as having an annual turnover exceeding US$ 100 billion3.

A request to have a PCT application listed in such a register can be submitted either by way of a special form4 or a letter to the IB stating that the invention claimed in the PCT application is available for licensing.

There will also be an option to provide information on the licensing terms that are being sought, which will also be published. Request to list a PCT application in the register of applications available for licensing can be submitted at any time from filing of a PCT application until expiry of the 30-month term from the priority date5. This new feature will be available as from 1 January 2012, for any international application in respect of which the period of 30 months from the priority date has not expired.

1 The WIPO office that manages the Patent Cooperation Treaty (PCT).
https://www.wipo.int/patentscope/search/en/search.jsf
3 https://about.americanexpress.com/news/pr/2011/ipzone.aspx
4 Form PCT/IB/382 “Request for indication of availability for licensing purposes”.
5 The date by which national phase applications, based on the PCT, need to be filed in many countries.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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