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Using the Patent Cooperation Treaty as a Strategic Tool for Business Success

Using the Patent Cooperation Treaty as a Strategic Tool for Business Success. Seminar on Intellectual Property and Creative Small and Medium-sized Enterprises in the Digital Environment Matthew R. Bryan - Director, Patent Cooperation Treaty Legal Division, WIPO (May 21, 2008).

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Using the Patent Cooperation Treaty as a Strategic Tool for Business Success

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  1. Using the Patent Cooperation Treaty as a Strategic Tool for Business Success Seminar on Intellectual Property and Creative Small and Medium-sized Enterprises in the Digital Environment Matthew R. Bryan - Director, Patent Cooperation Treaty Legal Division, WIPO (May 21, 2008)

  2. 1) What is the PCT? 2) The advantages of the PCT

  3. 1) What is the PCT?

  4. Using the traditional patent system to seek international patent protection File applications abroad 0 (months) 12 Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI File application locally

  5. A mainly procedural international treaty facilitating certain steps in the process of obtaining patents internationally • More specifically, the PCT establishes a procedure for the filing and processing of a single application for a patent which has legal effect in the countries which are Treaty members • Simplifies the procedure for obtaining patent protection in many countries, making it more efficient and economical for: (1) users of the patent system (applicants and inventors); and (2) patent Offices

  6. The PCT System --typical use, in more detail Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically a national patent application in the home country of the applicant

  7. The PCT System --typical use, in more detail Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States

  8. The PCT System --typical use, in more detail Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Report on state of the art (prior art documents and their relevance) + initial patentability opinion

  9. The PCT International Searching Authorities • Today: the Patent Offices of • Australia • Austria • Canada • China • Finland • Japan • Republic of Korea • Russian Federation • Spain • Sweden • United States of America • European Patent Office • Nordic Patent Institute • Soon: the Patent Offices of India and Brazil

  10. The PCT System --typical use, in more detail Disclosing to world content of application in standardized way Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  11. The PCT System --typical use, in more detail Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Request an additional patentability analysis on basis of amended application

  12. The PCT System --typical use, in more detail Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decision-making

  13. The PCT System --typical use, in more detail Express intention and take steps to pursue to grant in various states Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  14. General remarks on the PCT system (1) The PCT system is a patent “filing” system, not a patent “granting” system. There is no “PCT patent” or “global patent” The decision on granting patents is made exclusively by national or regional Offices in the national phase Only inventions may be protected via the PCT by applying for patents, utility models and similar titles Design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively) 10.02.05

  15. General remarks on the PCT system (2) The PCT is administered by WIPO as are other international conventions in the field of industrial property, such as the Paris Convention PCT signed in June 1970, in Washington, D.C., and became operational in June 1978 with 18 States

  16. =PCT 139 PCT States Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad China Colombia Comoros Congo Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Papua New Guinea Philippines St. Kitts and Nevis Sweden Switzerland Syrian Arab Republic Tajikistan The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uzbekistan Viet Nam Yugoslavia Zambia Zimbabwe Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Poland Portugal Republic of Korea Republic of Moldova Romania Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe (3 July 08) Senegal Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland

  17. Growth in PCT filings Approx. 156,100 total filings in 2007 = +4.7%

  18. International applications received in 2007 by country of origin

  19. (2) Why use the PCT?: its advantages

  20. Most businesses worldwide which seek and use patents share objectives to: • control costs while preserving options • make informed business decisions • use the best tools available when seeking protection The PCT responds to these objectives

  21. The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which-- 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements 4. brings the world within reach 5. protects applicant from certain inadvertent errors 6. evolves to meet user needs 7. is used by the world’s major corporations, universities and research institutions when they seek international patent protection 8. allows applicants to apply securely and easily online, and to save money by doing so

  22. 1. Postpones the major costs associated with internationalizing a patent application

  23. Fees for: --translations--Office fees--local agents Fees for: --translations--Office fees--local agents Traditional patent system vs. PCT system File applications abroad (months) 12 0 Traditional File local application Enter national phase International publication (months) PCT 0 12 16 18 22 28 30 File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability File local application

  24. PCT Costs--in perspective According to IP Global Estimator, the total cost of hypothetical application (RO/US, ISA/EP, 46 pages/12 claims w/3 independent, national phase in AU, CA, EPO, JP, MX, US, and EP validation in DE, FR, GB, IT, NL & SE, + maintenance fees--from filing until expiration of 12 national phase patents at 20 years from the filing date)would be USD $232,742 The PCT filing fees, including the international search by the EPO, (total: USD $3,637) represented 1.6% of what the PCT applicant could expect to pay throughout the full life of this patent family If the payment of annual maintenance fees is eliminated from the above calculation, the total amount that the applicant would expect to pay to see his/her patents granted is reduced to USD $86,398. PCT filing fees would then represent 4.2% of this amount [Estimate date: July 1, 2007]

  25. 2. Provides a strong basis for patenting decisions

  26. Example: international search report Symbols indicatingwhich aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc.) The claim numbersin your application towhich the document isrelevant Documents relevant to whether or not your invention may be patentable

  27. Example: written opinion of the ISA Reasoning supporting the assessment Patentability assessment of claims

  28. 3. Harmonizes formal requirements PCT Applicant’s Guide, paragraph 26: “There is a prescribed form for the international application. This form must be accepted by all designated Offices for the purposes of the national phase, so that there is no need to comply with a great variety of widely differing formal requirements in the many countries in which protection may be sought.” PCT Article 27(1): “No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and Regulations.”

  29. 4. Brings the world within reach How? PCT application = Legal effect of a regular national patentapplication in all PCT States

  30. 5. protects applicants from certain inadvertent errors • invited corrections of defects & fee payments • non-competent receiving Office • double formality review • restoration of priority • missing parts • rectification of obvious mistakes • excuse of national phase entry delay

  31. 6. Evolves to meet user needs

  32. PCT Meetings Calendar • MIA meeting—April 7-9, 2008 in Vienna • PCT Asia –-April 21-22, 2008, in Singapore • PCT Working Group—week of May 26, 2008 in Geneva • PCT Assembly—September/October 2008

  33. 7. Is used by the world’s major corporations, universities and research institutions when they seek international patent protection

  34. Top PCT Applicants (2007) 1. Matsushita Electric—JP (2100) 2. Philips—NL (2041) 3. Siemens—DE (1644) 4. Huawei—CN (1365) 5. Bosch—DE (1146) 6. Toyota—JP (997) 7. Qualcomm—US (974) 8. Microsoft—US (845) 9. Motorola—US (824) 10. Nokia—FI (8922) 11. BASF—DE (810) 12. 3M—US (769) 13. LG Electronics—KR (719) 14. Fujitsu—JP (708) 15. Sharp—JP (702) 16. NEC—JP (626) 17. Intel—US (623) 18. Pioneer—US (611) 19. IBM—US (606) 20. Samsung—KR (598)

  35. Other PCT users Nestle (CH) Novartis (CH) Colgate Palmolive (US) L’Oreal (FR) Rhone Poulenc (FR) Hoechst (US y DE) Glaxo (GB) Leica (CH) Shell (NL) Elf (FR) Salomon (FR) CNRS (FR) MIT (US) University of Texas (US) CalTech (US) Johns Hopkins(US) University of Michigan (US) Columbia University (US) Wisconsin Alumni Research Foundation (US) University of Florida (US) Stanford University (US) Daimler Benz (DE) Volvo (SE) Ford (US) Nissan (JP) Renault (FR) Honda (JP) Kawasaki (JP) Hitachi (JP) British Telecom (GB) MCI (US) AT&T (US) Boeing (US) McDonnell Douglas (US)

  36. 8. apply securely and easily online, and save money by doing so

  37. 1. Prepare application body: in XML using thePCT-SAFEEditor or in PDF 2. Prepare Request using free, WIPO-producedPCT-SAFEsoftware 0101010 1010101 0101010 Signature 3. Electronically sign: WIPO Customer digital certificate or other 4. Transmit (on-line or on CD-R) 5. Receive a receipt (for on-line filings) PCT Electronic filing overview

  38. PCT efilings—2007

  39. PCT E-filing fee reductions • 100 Swiss francs: paper filings request printout created with PCT-SAFE diskette prepared with PCT- SAFE • 100 Swiss francs:electronic filings request not in character coded format (for ex., PDF) • 200 Swiss francs: electronic filings text of application not in character coded format (for example, PDF) • 300 Swiss francs:electronic filings text of application in character coded format (for example, XML)

  40. Where to get help • For further information about the PCT, see http://www.wipo.int/pct/en/ • For general questions about the PCT, contact the PCT Information Service at: Telephone: (+41-22) 338 83 38 Facsimile: (+41-22) 338 83 39 E-mail: pct.infoline@wipo.int

  41. Questions?

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