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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 l.jpg

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


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Worldwide Patents? Marketplace

  • 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.


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Traditional Patent Systems Marketplace

  • 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 –


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Traditional Patent Systems, Marketplacecont.

(Months)

0

12

File Application

Locally

File Applications

Abroad


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The Patent Cooperation Treaty Marketplace

  • 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


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Purposes of the PCT Marketplace

  • 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


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PCT Contracting State Marketplace

  • 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.


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Regional Patents Marketplace

States Designated for Regional Protection

AP ARIPO Patent EA Eurasian PatentEP European PatentOA OAPI Patent

  • AT Austria

    • BE Belgium BG Bulgaria

    • CH Switzerland

    • CY Cyprus CZ Czech Republic

    • DE Germany

  • DK Denmark

  • EE Estonia

    • ES Spain

    • FI Finland

    • FR France

  • GB United Kingdom

    • GR Greece

    • HU Hungary

    • IE Ireland

    • IT Italy

      IS Iceland

    • LI Liechtenstein

    • LT Lithuania

  • LU Luxembourg

  • LV Latvia

    • MC Monaco

    • NL Netherlands

  • PL Poland

  • PT Portugal

  • RO Romania

    • SE Sweden

    • SK Slovakia

    • TR Turkey

  • BW Botswana

  • GH Ghana

  • GM Gambia

  • KE Kenya

  • LS Lesotho

  • MW Malawi

  • MZ Mozambique

  • SD Sudan

  • SL Sierra Leone

  • SZ Swaziland

    TZ United Republic of Tanzania

  • UG Uganda

  • ZM Zambia

  • ZW Zimbabwe

AM Armenia

AZ Azerbaijan BY Belarus

KG Kyrgyzstan KZ Kazakhstan

MD Republic of Moldova

RU Russian

FederationTJ TajikistanTM Turkmenistan

  • BF Burkina Faso

  • BJ Benin

  • CF Central African

  • Republic

  • CG Congo

  • CI Côte d’Ivoire

  • CM Cameroon

  • GA Gabon

  • GN Guinea

  • GQ Equatorial Guinea

  • GW Guinea-Bissau

  • ML Mali

  • MR Mauritania

  • NE Niger

  • SN Senegal

  • TD Chad

  • TG Togo

  • Regional patent only


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National Patents Marketplace

States Designated for National Protection

NG Nigeria

NO Norway

NZ New Zealand

OM Oman

PG Papua New Guinea

PH Philippines

SC Seychelles

SG Singapore

SM San Marino

SY Syrian Arab Republic TN Tunisia

TT Trinidad and Tobago

UA Ukraine

US United States of America

UZ Uzbekistan

VC Saint Vincent and the Grenadines

VN Viet Nam

YU Serbia and Montenegro

ZA South Africa

ID Indonesia

IL Israel

IN India

IS Iceland JP Japan KM Comoros

KP Democratic People’s

Republic of Korea

KR Republic of Korea LC Saint Lucia LK Sri Lanka

LR Liberia

MAMorocco MG Madagascar

MK The former Yugoslav

Republic of Macedonia

MN Mongolia MX Mexico

NA Namibia

NI Nicaragua

AE United Arab Emirates

AG Antigua and Barbuda

AL Albania

AU Australia BA Bosnia and Herzegovina BB Barbados BR Brazil

BZ Belize

CA Canada CN China

CO Colombia

CRCosta Rica

CU Cuba

DM Dominica

DZ Algeria EC Ecuador

EG Egypt

GD Grenada GE Georgia

HR Croatia



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Record Copies Received by MarketplaceCountry of Origin

42,713


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Advantages of the PCT Marketplace

  • 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 –


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Advantages of the PCT, Marketplacecont.

  • 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


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PCT System Marketplace

  • 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


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PCT System Marketplace

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


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The International Application Marketplace

  • 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.


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For International Applications Filed with USPTO Marketplace

  • 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.”


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IPEA/US Marketplace

Choices for U.S. Nationals and Residents

IPEA/EP

RO/US

ISA/US

ISA/EP


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Filing International Applications in the RO/US Marketplace

  • 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.


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Two Phases of the PCT Marketplace

  • International phase:

    • Chapter I

      • Designated offices

    • Chapter II (optional)

      • Elected offices

  • National phase (stage)


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Chapter I Proceedings Marketplace

  • International application filed

  • International search performed by the ISA

  • International search report and written opinion of the ISA prepared

    – continued –


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Chapter I Proceedings, Marketplacecont.

  • 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


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Parts of an International Application Marketplace

  • 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


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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 –


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Article 11(1) Requirements, Filing Datecont.

  • 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 –


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Article 11(1) Requirements, Filing Datecont.

  • 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)


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Not Required for Obtaining an International Filing Date Filing Date

  • Payment of fees

  • Applicant’s signature

  • Title of the invention

  • Abstract

  • Formal drawings


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Chapter I Fees Filing Date

  • 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 –


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Chapter I Fees, Filing Datecont.

  • 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


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Purposes of Chapter II Filing Date

  • 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


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Chapter II Proceedings Filing Date

  • 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


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Chapter II Fees Filing Date

  • 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.


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Steps for National Stage Entry Filing Date

  • 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.


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PCT Resources Filing Date

  • 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 –


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PCT Resources, Filing Datecont.

  • 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/


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Conference on Intellectual Property in the Global Marketplace

Introduction to the Patent Cooperation Treaty

[presenter’s email address]

THANK YOU


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