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Introduction to the Patent Cooperation Treaty (PCT)

Introduction to the Patent Cooperation Treaty (PCT). December 2011. Matthew Bryan, Director, PCT Legal Division, WIPO . Using the traditional patent system to seek multinational patent protection.

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Introduction to the Patent Cooperation Treaty (PCT)

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  1. Introduction to the Patent Cooperation Treaty (PCT) December 2011 Matthew Bryan, Director, PCT Legal Division, WIPO

  2. Using the traditional patent system to seek multinational patent protection 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 applications abroad 0 (months) 12 File application locally

  3. 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

  4. 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

  5. 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

  6. PCT International Searching Authorities The ISAs are the following 17 offices: • Australia • Austria • Brazil • Canada • China • Egypt (not yet operating) • Finland • India (not yet operating) • Israel (not yet operating) • Japan • Republic of Korea • Russian Federation • Spain • Sweden • United States of America • European Patent Office • Nordic Patent Institute

  7. 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

  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 Request an additional patentability analysis on basis of amended application

  9. 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

  10. 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

  11. (optional) Request for supplementary international search The PCT System (optional) Supplementary international search report International publication (months) 19 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

  12. 144 PCT States =PCT 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 Chile China Colombia Comoros Congo 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 • Malawi • Malaysia • Mali • Malta • Mauritania • Mexico • Monaco • Mongolia • Montenegro • Morocco • Mozambique • Namibia • Netherlands • New Zealand • Nicaragua • Niger • Nigeria • Norway • Oman • Papua New Guinea • Peru • Philippines 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 • St. Kitts and Nevis • Sweden • Switzerland • Syrian Arab Republic • Tajikistan • Thailand • 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 • Zambia • Zimbabwe Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Rwanda Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland

  13. PCT Statistics Overall +5.7% in 2010 All-time record of 164,300 applications

  14. 2 million PCT applications April 14, 2011: event marking the filing of the 2 millionth PCT application

  15. International applications received in 2010 by country of origin US: -1.6% JP: +8% DE: +4.5% KR: +20.3% CN: +55.6% IN: +36.6% 2010: the year East Asia overtook North America and Western Europe to become the subregion accounting for most PCT filings

  16. International applications received in 2010 by country of origin (cont.)

  17. PCT Applications by Field of Technology (2010)

  18. Highest filing technical areas (2010)

  19. WIPO: main sources of revenue Budget 2010-2011: CHF 618 million(decrease of 1.6% (9.8m) on 08-09)

  20. Certain PCT Advantages 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

  21. 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

  22. Certain PCT Advantages 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

  23. Example: PCT 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

  24. Example: PCT Written opinion of the International Searching Authority Reasoning supporting the assessment Patentability assessment of claims

  25. Certain PCT Advantages 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

  26. Harmonization of formal requirements 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.” PCT Applicant’s Guide, paragraph 4.011:“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.”

  27. Certain PCT Advantages 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. protects applicant from certain inadvertent errors

  28. Protection from 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

  29. Certain PCT Advantages 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. protects applicant from certain inadvertent errors • 5. evolves to meet stakeholder needs

  30. PCT Meetings • Meeting of International Authorities—annual (usually first quarter) • PCT Working Group—annual (usually second quarter) • PCT Assembly—September/October • Conferences—for example: • “PCT China”—Beijing, December 2007 • “PCT Asia”—Singapore, April 2008 • “PCT for the Americas”—Miami, November 2008 • WIPO/OEPM Seminar on the PCT for Latin American countries—Mexico City, December 8 to 10, 2010 • (5) Constant contact with PCT users

  31. Certain PCT Advantages 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. protects applicant from certain inadvertent errors • 5. evolves to meet user needs • 6. is used by the world’s major corporations, universities and research institutions when they seek international patent protection

  32. Top PCT Applicants 2010 • Panasonic—JP (2154) • ZTE Corporation—CN (1868) • Qualcomm—US (1677) • Huawei—CN (1528) • Philips—NL (1435) • Bosch—DE (1301) • LG Electronics—KR (1298) • Sharp—JP (1286) • Ericsson—SE (1149) • NEC—JP (1106) • Toyota—JP (1095) • Siemens—DE (833) • BASF—DE (818) • Mitsubishi Electric—JP (726) • Nokia—FI (632) • 3M—US (586) • Samsung Electronics—KR (578) • HP—US (564) • Fujitsu—JP (476) • Microsoft—US (469)

  33. PCT Challenges (1) • Trying to keep PCT from being politicized like other parts of WIPO’s work • Quality of international work products • Building trust between patent offices, so duplicative international phase and national phase processing can be reduced • Language issues • Developing countries (“how can we realistically benefit from PCT?”) • Top 15 countries responsible for 92.1% of IAs published in 2009 • Top 32 countries filed 96% of IAs in 2009 • The other 4% of filings are spread across 110 countries

  34. PCT Challenges (2) • Making PCT accessible to applicants of all types from all Contracting States (for example, SMEs) • Helping PCT users stay abreast of new developments and strategies • Unscrupulous companies/individuals who want to mislead PCT applicants into paying unrelated and unnecessary fees

  35. WARNING: Requests for Payment of Fees • applicants and agents are continuing to receive invitations to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT. Whatever registration services might be offered in such invitations, they bear no connection to WIPO or to any of its official publications. • http://www.wipo.int/pct/en/warning/pct_warning.htm

  36. Recent and future PCT developments "PCT Roadmap" quality initiatives Work with ISAs to improve quality of ISR/WO Implement third party observation system Cooperate with IP5 on collaborative search PCT-PPH Improving the PCT user experience Encouraging Offices to withdraw incompatibilities ePCT: secure file inspection system + further services Indication of availability for license Improvements to PCT-related Infrastructure facilitating sharing of national, regional and international reports increase in PATENTSCOPE coverage, as well as new features and contents

  37. PCT training options • PCT Distance learning course content available in the 10 PCT publication languages • PCT Webinars • providing free updates on developments in PCT procedures • upon request also for companies or law firms • PCT Seminars and training sessions (in person)

  38. 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

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