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Conference on Intellectual Property in the Global Marketplace. Introduction to the Patent Cooperation Treaty. Mike Neas Special Program Examiner Office of PCT Legal Administration U.S. Patent and Trademark Office. Worldwide Patents?. There is no “international patent.”

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Introduction to the Patent Cooperation Treaty

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Conference on Intellectual Property in the Global Marketplace

Introduction to the Patent Cooperation Treaty

Mike Neas

Special Program Examiner

Office of PCT Legal Administration

U.S. Patent and Trademark Office


Worldwide Patents?

  • There is no “international patent.”

  • The Patent Cooperation Treaty (PCT) functions as a patent application filing system.

  • The applicant must still prosecute the international application in each national or regional office in order to obtain a patent.


Traditional Patent Systems

  • 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

    • – continued –


Traditional Patent Systems, cont.

(Months)

0

12

File Application

Locally

File Applications

Abroad


The Patent Cooperation Treaty

  • A United Nations treaty

    • Signed in June 1970 at the Washington Diplomatic Conference

    • Became operational in June 1978

    • Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland


Purposes of the PCT

  • To simplify the process of filing foreign patent applications

  • To give every regional and national patent office the benefit of a search and a preliminary report on patentability by a major patent office


PCT Contracting State

  • A country which is a signatory to the PCT

  • Eighteen Contracting States in 1978

  • Currently 126 Contracting States

    • Comoros became bound by the Treaty on April 3, 2005.

    • Nigeria became bound by the Treaty on May 8, 2005.

    • As of September 15, 2005, when Libya becomes bound by the Treaty, 127 Contracting States.


Regional Patents

States Designated for Regional Protection

AP ARIPO Patent EA Eurasian PatentEP European PatentOA OAPI Patent

  • ATAustria

    • BEBelgiumBGBulgaria

    • CHSwitzerland

    • CYCyprus CZCzech Republic

    • DE Germany

  • DKDenmark

  • EE Estonia

    • ESSpain

    • FIFinland

    • FRFrance

  • GBUnited Kingdom

    • GRGreece

    • HUHungary

    • IEIreland

    • ITItaly

      ISIceland

    • LI Liechtenstein

    • LT Lithuania

  • LULuxembourg

  • LV Latvia

    • MCMonaco

    • NLNetherlands

  • PLPoland

  • PT Portugal

  • RO Romania

    • SESweden

    • SKSlovakia

    • TRTurkey

  • BWBotswana

  • GHGhana

  • GMGambia

  • KEKenya

  • LSLesotho

  • MWMalawi

  • MZMozambique

  • SDSudan

  • SLSierra Leone

  • SZSwaziland

    TZUnited Republicof Tanzania

  • UGUganda

  • ZMZambia

  • ZWZimbabwe

AMArmenia

AZAzerbaijan BYBelarus

KGKyrgyzstan KZKazakhstan

MDRepublic of Moldova

RURussian

FederationTJTajikistanTMTurkmenistan

  • BFBurkina Faso

  • BJBenin

  • CFCentral African

  • Republic

  • CGCongo

  • CICôte d’Ivoire

  • CMCameroon

  • GAGabon

  • GNGuinea

  • GQEquatorial Guinea

  • GWGuinea-Bissau

  • MLMali

  • MRMauritania

  • NENiger

  • SNSenegal

  • TDChad

  • TGTogo

  • Regional patent only


National Patents

States Designated for National Protection

NGNigeria

NONorway

NZNew Zealand

OMOman

PGPapua New Guinea

PHPhilippines

SC Seychelles

SGSingapore

SM San Marino

SYSyrian Arab Republic TN Tunisia

TTTrinidad and Tobago

UAUkraine

USUnited States of America

UZUzbekistan

VCSaint Vincent and the Grenadines

VNViet Nam

YUSerbia and Montenegro

ZASouth Africa

IDIndonesia

ILIsrael

INIndia

ISIcelandJPJapanKMComoros

KPDemocratic People’s

Republic of Korea

KRRepublic of KoreaLCSaint LuciaLKSri Lanka

LRLiberia

MAMoroccoMGMadagascar

MKThe former Yugoslav

Republic of Macedonia

MNMongoliaMXMexico

NA Namibia

NINicaragua

AEUnited Arab Emirates

AGAntigua and Barbuda

AL Albania

AUAustraliaBABosnia and Herzegovina BBBarbadosBRBrazil

BZBelize

CACanadaCNChina

COColombia

CRCosta Rica

CUCuba

DMDominica

DZAlgeriaECEcuador

EGEgypt

GDGrenada GEGeorgia

HRCroatia


Number of International Applications Received

121,264


Record Copies Received by Country of Origin

42,713


Advantages of the PCT

  • To file in up to 126 countries with a single international application

  • To delay the expenses associated with:

    • Translations

    • Foreign filing fees

    • Local associates

      – continued –


Advantages of the PCT, cont.

  • To provide an early indication of pertinent prior art and written opinion as to the novelty, inventive step and industrial applicability of the claimed invention

  • To give extra time for assessment of commercial viability in designated states


PCT System

  • Local application followed within 12 months by the PCT, claiming priority under the Paris Convention.

    • One set of formalities requirements

    • International search

    • International publication

    • Optional international preliminary examination

    • Translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry


PCT System

International

Publication

Chapter I

(Months)

16

0

12

18

30

20

International

Search Report/ Written Opinion

File

PCT

File First

Application

OR

Enter

National Phase

File Demand

International

Preliminary

Examination

30

Chapter II


The International Application

  • A single application is:

    • Filed in one language.

    • Filed in one patent office.

      • The receiving office (RO)

      • Usually the applicant's home patent office

    • Treated as a national application in each designated State as of the international filing date.

  • Compliance with the form prescribed for the international application must be accepted by all designated States during national stage.


For International Applications Filed with USPTO

  • Competent receiving office for residents and nationals of the U.S.

  • Language of filing: English

  • Number of copies required: One

  • Competent International Searching Authorities (ISAs): USPTO, European Patent Office (EPO)*

  • Competent International Preliminary Examining Authorities (IPEAs): USPTO, EPO (only if EPO was ISA)

* EPO will not search applications with claims directed to “business methods.”


IPEA/US

Choices for U.S. Nationals and Residents

IPEA/EP

RO/US

ISA/US

ISA/EP


Filing International Applications in the RO/US

  • Patent attorneys or agents registered to practice before the PTO may represent applicants in international applications.

  • Applicants may choose to represent themselves in international applications.

  • All international applications are screened for compliance with U.S. national security provisions before the record copy is forwarded to the IB.

  • RO/US does not accept filing of international applications by fax.


Two Phases of the PCT

  • International phase:

    • Chapter I

      • Designated offices

    • Chapter II (optional)

      • Elected offices

  • National phase (stage)


Chapter I Proceedings

  • International application filed

  • International search performed by the ISA

  • International search report and written opinion of the ISA prepared

    – continued –


Chapter I Proceedings, cont.

  • Optional amendment to the claims only

    • Filed with the IB of WIPO under Article 19 after search report mailed

  • International application, search report and Article 19 amendment published by IB

    • Published pamphlet sent to designated States by IB

    • Written opinion of the ISA is not published


Parts of an International Application

  • A request:

    • Form PCT/RO/101, or

    • Computer-generated request (e.g, PCT-SAFE request).

  • A description of the invention

  • One or more claims

  • One or more drawings where necessary to illustrate the invention

  • An abstract


Article 11(1) Requirements for According an International Filing Date

  • Applicant has right to file with RO for reasons of residence or nationality (Rules 18 and 19).

    • Application transmitted to IB as RO under Rule 19.4(a) if applicant is resident or national of PCT Contracting State but not national or regional office where filed.

      – continued –


Article 11(1) Requirements, cont.

  • Application is in a language prescribed by the RO. (Rule 12.1)

    • Application transmitted to IB as RO under Rule 19.4(b) if not in a language prescribed by the national or regional office where it was submitted.

      – continued –


Article 11(1) Requirements, cont.

  • Application must contain:

    • An indication that it is intended as an international application filed under the PCT. (Rule 4.2)

    • A designation of at least one Contracting State.

      • Filing of a request constitutes the designation of all Contracting States bound by the Treaty on the international filing date.

    • Name of the applicant (Rule 4.5)

    • A description (Rule 5)

    • One or more claims (Rule 6)


Not Required for Obtaining an International Filing Date

  • Payment of fees

  • Applicant’s signature

  • Title of the invention

  • Abstract

  • Formal drawings


Chapter I Fees

  • Transmittal fee is $300

  • Search fee:

    • ISA/US:

      • $300: If there is a corresponding prior U.S. national application under 35 USC 111(a) and the conditions under 37 CFR 1.445(a)(2)(i) are met

      • $1,000: All other situations

    • ISA/EP is $2,075

      – continued –


Chapter I Fees, cont.

  • International filing fee:

    • $1,211: For first 30 pages of the international application

    • $13: For each additional page over 30

  • Priority document fee is $20.

  • Due within one month of the date of receipt of the international application


Purposes of Chapter II

  • To formulate a preliminary, non-binding opinion on whether the claimed invention appears.

    • To be novel

    • To involve an inventive step (that is, to be non-obvious)

    • To have industrial applicability


Chapter II Proceedings

  • Demand is filed with a competent IPEA.

    • May include amendments to description, claims and drawings under Article 34

  • International Preliminary Report on Patentability (Chapter II) is prepared by IPEA and sent to:

    • Applicant and IB by IPEA

    • Elected States by IB at 30 months


Chapter II Fees

  • Handling fee is $173

  • Preliminary examination fee is:

    • $600: If USPTO was the ISA

    • $750: If the USPTO was not the ISA

  • Due within one month from the date of submission of the demand or 22 months from the priority date, whichever expires later.


Steps for National Stage Entry

  • Prepare translations of the international application into languages required by the desired patent offices, as applicable.

  • Transmit translation and necessary fees to each desired national or regional patent office previously designated/elected.

  • Details for entry in each contracting state can be found in the PCT Applicant’s Guide.


PCT Resources

  • Manual of Patent Examining Procedure (MPEP):

    • Chapter 1800

    • Appendix T (PCT and regulations)

    • Appendix AI (PCT Administrative Instructions)

  • PCT Help Desk:

    • Phone: 571-272-4300 (new as of July 1, 2005)

    • Fax: 571-273-0419

      – continued –


PCT Resources, cont.

  • PCT home page on PTO Internet site:

    • www.uspto.gov/go/pct/

  • PCT newsletter, PCT Applicant's Guide, etc., available on the Internet:

    • www.wipo.int/pct/en/index.html

  • GAO Report No. GAO-03-910 (“Experts’ Advice for Small Businesses Seeking Foreign Patents”):

    • www.gao.gov

  • WIPO’s Small and Medium-Sized Enterprises Division:

    • www.wipo.int/sme/en/


Conference on Intellectual Property in the Global Marketplace

Introduction to the Patent Cooperation Treaty

[presenter’s email address]

THANK YOU


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