Patent Cooperation Treaty


Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

A single filing of an international application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA).[1] Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.

A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority.[2] In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.

The contracting states,[3] the states which are parties to the PCT, constitute the International Patent Cooperation Union.[3]

Contents

History

The Washington Diplomatic Conference on the Patent Cooperation Treaty was held in Washington from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed on the last day of the conference on June 19, 1970. The Treaty entered into force on January 24, 1978, initially with 18 contracting states.[4] The first international applications were filed on June 1, 1978.[4] The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.


An international patent application (also called PCT application, as mentioned above) has two phases. The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT. The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.[5] A PCT application, as such, is not an actual request that a patent be granted, and it is not converted into one unless and until it enters the "national phase".[6]

=

International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA)[7]
1. Austrian Patent Office (AT).
2. Australian Patent Office (AU).
3. National Institute of Industrial Property (BR).[8]
4. Canadian Intellectual Property Office (CA).
5. State Intellectual Property Office of the People’s Republic of China (CN).
6. European Patent Office (EP).
7. Spanish Patent and Trademark Office (ES).
8. National Board of Patents and Registration of Finland (FI).
9. Japan Patent Office (JP).
10. Korean Intellectual Property Office (KR).
11. Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation) (RU).
12. Swedish Patent and Registration Office (SE).
13. United States Patent and Trademark Office (US).
14. Nordic Patent Institute (XN).
Note 1: All International Searching Authorities are also International Preliminary Examining Authorities.
Note 2: The Egyptian Patent Office and the Israeli Patent Office were appointed as ISA and IPEA on September 25, 2009. Their appointments will become effective when they are ready to begin operations.[9]

Search and written opinion

documents regarding the claimed subject matter. The search results in an International Search Report (ISR), together with a written opinion regarding patentability.[10]

The ISR is normally provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).

The ISR is published together with the international application (or as soon as possible afterwards). The written opinion is initially confidential, but unless it is superseded by an International Preliminary Examination Report (see optional examination, below), it is made available in the form of an International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty, or IPRP Chapter I), within 30 months of the filing date or a priority date, if any.[11] If the ISR is not in English, it is translated into English for publication.[12] A designated Office may require a translation of the IPRP Chapter I into English.[13]

The international search report can help the applicant to decide whether it would be worthwhile to seek national protection, and if so, in how many countries, as it costs fees and other expenses, including costs of translation, to enter the national phase in each country. Yet another advantage of filing an international application under the PCT is that many national patent authorities will rely on the international search report (although the PCT does not oblige them to do so) instead of starting from scratch to search the prior art themselves, and the applicant may be able to save in search fees.[14]

In addition to the compulsory international search, one or more optional supplementary international searches may also be carried out by participating International Searching Authorities,[15] upon request by the applicant[16] and payment of corresponding fees.[17] The purpose is to reduce the likelihood of seeing new prior art being cited in the subsequent national phases.[18] A supplementary international search is said to allow applicants to obtain an additional search report "taking into account the growing linguistic diversity of the prior art being found".[18] In 2009 and 2010, the demand for supplementary international searches was relatively low.[19]

Publication

18 months after the filing date or the priority date, the international application is published by the International Bureau at the WIPO, based in Geneva, Switzerland, in one of the ten "languages of publication": Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish.[20] There is an exception to this rule, however. If 18 months after the priority date, the international application designates only the United States, then the application is not automatically published.[21]

Optional examination

An international preliminary examination may optionally be requested ("demanded").[22][23] The international preliminary examination is conducted by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examination Report (IPER). Since 2004, the IPER bears the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter II").[24] The filing of a demand for international preliminary examination, which must be done within a time limit,[25] is subject to the payment of a "handling fee" for the benefit of the International Bureau[26] and a "preliminary examination fee" for the benefit of the IPEA.[27] The cost of filing a demand varies depending on the IPEA used by the applicant.[23]

If the written opinion established by the International Searching Authority (ISA) is positive, "there is little value to be obtained from filing a demand".[23] However, "[for] cases where the written opinion of the ISA contains negative findings, the savings in the applicant’s/agent’s time and, where applicable, agent’s fees, required by multiple responses to national offices may well justify the use of the Chapter II procedure."[28] There are many advantages, such as cost and effort savings ("as well as possibly shortened pendency/faster grants"[28]), in receiving a favorable IPRP Chapter II, i.e. a favorable report following an international preliminary examination.[28] For instance, national offices "with a smaller examining staff and those without examiners tend to rely more heavily on the results in the IPRP Chapter II".[28]

When an examination is demanded, the contracting states for which the examination is demanded are called Elected Offices (under Chapter II), otherwise they are called Designated Offices (under Chapter I). The election of a contracting state correspondingly means electing it when demanding (requesting) the examination.

An alternative to the filing of a demand for international preliminary examination is to file informal comments in response to the written opinion established by the ISA. These informal comments are not published. The informal comments should be submitted to the International Bureau (IB), and not to the ISA or the IPEA.[29] They are kept in the file of the international application and, in the case where no demand is filed, forwarded to the designated offices,[23][29] which are free to require a translation of the informal comments.[29]

Subject matter

The PCT does not make any specific provision concerning the types of invention which may be the subject of an international application. Rules 39 and 67 permit International Searching and Preliminary Examining Authorities not to carry out search and examination on certain types of subject matter, such as scientific and mathematical theories, methods of doing business and computer programs to the extent that the Authority is not equipped to carry out a search or international preliminary examination concerning such programs. However, while a lack of international search may make national processing more difficult, Article 27(5) PCT makes clear that this does not affect the issue of whether the invention is patentable under the laws of the designated States:

"Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each contracting state to prescribe such substantive conditions of patentability as it desires. (...)"

National and regional phase

Finally, at 30 months[30] from the filing date of the international application or from the earliest priority date of the application if a priority is claimed, the international phase ends and the international application enters in national and regional phase. However, any national law may fix time limits which expire later than 30 months. For instance, it is possible to enter the European regional phase at 31 months from the earliest priority date. National and regional phases can also be started earlier on the express request of the applicant, even before publication of the international application.[31]

If the entry into national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.[32]

Statistics

The millionth international application (or PCT application) was filed at the end of 2004,[33] whereas the two millionth application was filed in 2011.[34] The first ever decline in the number of filed PCT applications in an over 30-year history occurred in 2009, with a 4.5 percent drop compared to 2008.[35] WIPO provides regular updated statistics on its website.

See also

References and notes

  1. ^ Article 32 PCT
  2. ^ Oxonica Energy Ltd v Neuftec Ltd (2008) EWHC 2127 (Pat), item 45.
  3. ^ a b Article 1(1) PCT
  4. ^ a b World Intellectual Property Organization, The First Twenty-five Years of the Patent Cooperation Treaty (PCT) 1970-1995, 1995, ISBN 9280506013, page 141.
  5. ^ "PCT Applicant's Guide"
  6. ^ Oxonica Energy Ltd v Neuftec Ltd (2008) EWHC 2127 (Pat), item 19.
  7. ^ World Intellectual Property Organization, The PCT Applicant's Guide (Last updated 26 November 2009)
  8. ^ It began functioning as an ISA and IPEA with effect from 7 August 2009, in World Intellectual Property Organization, National Institute of Industrial Property (Brazil) to Begin Functioning as International Searching and Preliminary Examining Authority, PCT Newsletter, 07-08/2009
  9. ^ Assembly of the PCT Union, PCT Newsletter, October 2009, p. 1.
  10. ^ The written opinion is established by the International Searching Authority (ISA) for international applications filed on or after January 1, 2004 only.
  11. ^ Rule 44bis.1(b) PCT
  12. ^ Rule 45.1 PCT
  13. ^ Rule 44bis.3 PCT
  14. ^ Oxonica Energy Ltd v Neuftec Ltd (2008) EWHC 2127 (Pat), item 46.
  15. ^ namely, an International Searching Authority which is competent to do so under Rule 45bis.9 PCT
  16. ^ Rule 45bis.1(a) PCT
  17. ^ Rule 45bis.2 and 3 PCT
  18. ^ a b WIPO web site, Amendments to the PCT Regulations as from 1 January 2009, undated. Consulted on October 17, 2009.
  19. ^ Supplementary International Search, PCT/MIA/18/10, February 24, 2011 (Document prepared by WIPO's International Bureau). Consulted on April 15, 2011.
  20. ^ Rule 48.3 PCT
  21. ^ Article 64(3) PCT, PCT Reservations, Declarations, Notifications and Incompatibilities
  22. ^ The international preliminary examination may start before the publication of the international application if the applicant has expressly requested an earlier start. See WIPO, PCT International Search and Preliminary Examination Guidelines (Guidelines for the Processing by International Searching and Preliminary Examining Authorities of International Applications Under the Patent Cooperation Treaty) as in force from March 25, 2004, Page 25, "Commencement of International Preliminary Examination: ... The International Preliminary Examining Authority normally starts the international preliminary examination when: ... (b) the time limit within which the applicant was permitted to file the demand ... has expired, or earlier if the applicant has expressly requested an earlier start".
  23. ^ a b c d "Factors to be considered when deciding whether or not to file a demand for international preliminary examination" (Views of David Reed), Practical Advice, PCT Newsletter No. 04/2010, page 8ff.
  24. ^ Rule 70.15(b) PCT
  25. ^ Article 31(5) PCT and Rule 54bis PCT
  26. ^ Rule 57 PCT
  27. ^ Rule 58 PCT
  28. ^ a b c d "Factors to be considered when deciding whether or not to file a demand for international preliminary examination – Part 2" (Views of David Reed), Practical Advice, PCT Newsletter No. 05/2010, page 8ff.
  29. ^ a b c PCT Newsletter 10/2004: Practical Advice. Consulted on April 25, 2010.
  30. ^ The 30-month time limit to enter the national phase is not applicable to all countries. A small number of countries still request the entering of the national phase under Chapter I (i.e., if the preliminary examination is not demanded or not demanded in time) at 20 months. Consult this chart for national phase entry deadlines for specific countries or regions.
  31. ^ Article 20(3) PCT or Article 40(2) PCT; Entering the national phase early where the international application has not yet been published, Practical Advice, PCT Newsletter No. 10/2011, page 15ff.
  32. ^ Article 24(1)(iii) PCT
  33. ^ WIPO web site, PCT One Million and Counting
  34. ^ Two Millionth PCT Application Filed, PCT Newsletter, April 2011, No. 04/2011, p. 1.
  35. ^ Kaitlin Mara, First-Ever Drop In Filings Under Patent Cooperation Treaty Seen In 2009 , Intellectual Property Watch, 8 February 2010. Consulted on February 18, 2010.

Further reading

  • Cees Mulder, The Cross-Referenced Patent Cooperation Treaty, updated yearly, Helze Publisher. [1]
  • Peter Watchorn and Andrea Veronese, PCT Procedures and Passage into the European Phase, Kastner AG, 2nd Edition, 2010, ISBN 978-3-941951-11-2 [2].

External links


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