introduction to the patent cooperation treaty charles pearson office of pct legal administration...

Introduction to the Patent Cooperation Treaty

Charles PearsonOffice of PCT Legal AdministrationUnited States Patent and Trademark Office

November 2014 Patent Cooperation Treaty 1

Objectives

• To understand the structure and function of the Patent Cooperation Treaty (PCT)– International and National Stages

• To understand duties and obligations under the Treaty– IB (International Bureau)– RO (receiving Office)– ISA (International Searching Authority)– SISA (Supplementary International Searching Authority)– IPEA (International Preliminary Examining Authority)– DO/EO (Designated Office/Elected Office)


The Patent Cooperation Treaty

• A United Nations Treaty– signed June 1970 – became operational June 1978– administered by the International Bureau

(IB)• of the World Intellectual Property Organization

(WIPO) in Geneva, Switzerland


International Patent?

• An international application (IA) is filed under the PCT but…– there is no “international patent”– the PCT functions as a patent application filing

system– the IA must still be prosecuted

• in each national or regional office where patent protection is desired


PCT Benefits for Applicants

• Simplifies the process of filing foreign applications– one set of formality requirements– establishes a filing date in all PCT Contracting States

• Postpones costs– for filing in the national/regional offices– translation fees, filing fees, attorney fees

• Provides – an early indication of prior art and – a written opinion as to the novelty, inventive step and

industrial applicability of the claimed invention• Gives extra time for assessment of commercial

viability in designated States


PCT Benefits for Offices

• Provides every regional and national patent Office, where protection is sought, the benefit of– an International Search Report (ISR) and – Written Opinion of the International Searching Authority

(WOISA)– optionally, a Supplementary International Search Report

(SISR)• by a Supplementary International Searching Authority

– optionally, an International Preliminary Report on Patentability (Chapter II) – IPRP (CH II) • by an International Preliminary Examining Authority (IPEA)


PCT Contracting State

• A country which is a signatory to the PCT

• Eighteen (18) Contracting States in 1978

• Currently 148 Contracting States


LSAC – December 2014 8

PCT Contracting States

PCT World Map(148 Contracting States on 03 August 2013)



International Applications Filed

• In 2013, estimated 205,300 PCT international applications were filed

‒ 57,793 filed in US (28.1% of total PCT filings)

• Since the inception of the PCT system, over 2.5 million international applications have been filed worldwide


Applications Filed at USPTO

• In 2014, PCT Filings in RO/US increased 11.5% from 2013

• National phase application filing increased 6.4%

Fiscal Year 2008 2009 2010 2011 2012 2013 2014International Applications (RO/US) 54488 47572 45701 48285 52417 56226 62697U.S. National Phase Applications 57345 57879 61587 65463 67573 73488 78213

The International Application

• A single application– filed together with a Request

• by a resident/national of a PCT Contracting State– 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

• Formalities in compliance with the PCT – must be accepted during national phase


Paris Convention Filing Timeline

0 12

Fileapplication

locally

File multipleapplications

abroad

(months)

• Local patent application filed first– multiple foreign applications filed at 12 months, claiming priority

under the Paris Convention• multiple formality requirements• multiple prosecutions of applications• translations and national/regional fees required at 12 months


PCT Filing Timeline

0

(months)

File first application

Enternational

phase

30

File International Application

12 18

International Publication

• Local patent application filed first– single international application filed at 12 months,

claiming priority under the Paris Convention• one set of formalities requirements• one international phase prosecution• translations and national/regional fees and prosecution not required

until 30 months


Two Phases of the PCT

• International phase – Chapter I (mandatory)– Chapter II (optional)

• National phase (stage)


Chapter I


Chapter I - Filing and Searching

• International application is – filed in a receiving Office (RO)– searched by an International Searching Authority (ISA)

• Documents issued– International Search Report (Form PCT/ISA/210)

• rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203)

– Written Opinion of the ISA (Form PCT/ISA/237)• reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373)

– optional - Supplementary International Search Report (SISR - Form PCT/SISA/501)


• Optional amendment to claims only, by applicant– filed directly with the IB under PCT Article 19

• complete set of claims• within 2 months of ISR mailing date

• Publication of international application by the IB– with ISR and Article 19 amendments, if any– available on IB web site - PATENTSCOPE

Chapter I - Amendment and Publication


International Searching Authority (ISA)

• Each PCT Contracting State reaches agreement– with one/more ISA(s) to search international applications filed

in its receiving Office• Applicants who are U.S. residents or nationals

– filing in the RO/US or RO/IB can select as ISA• USPTO• European Patent Office (EPO)• Korean Intellectual Property Office (KIPO) • Australian Patent Office (IPAU)• Russian Federation (Rospatent)• Israel Patent Office (ILPO)

• USPTO acts as ISA for international applications filed in certain other receiving Offices


International Searching and Preliminary Examining Authorities

• AT Austria• AU Australia• BR Brazil• CA Canada• CL Chile• CN China• EG Egypt• EP EPO• ES Spain• UK Ukraine*• SG Singapore*

• FI Finland• IL Israel• IN India• JP Japan• KR Republic of Korea• RU Russian Federation• SE Sweden• US United States• XN Nordic Patent Institute• Chile

*Has not yet commenced operationsNovember 2014 Patent Cooperation Treaty 20

18|

|File local (priority)

application

0|

12|

16|

(months)

30|

Typically a national patent application in the country of the applicant

28|

PCT System Priority application filed

Date for calculation of all PCT time limits


18|


application

0|

12*|

16|

(months)

30|

28|

PCT System – Chapter IInternational Application Filed

|File

international application

under the PCT

Start of International phase

Typically filed in the same national office international filing/search fees one language one set of formalities legal effect in all PCT States

Chapter I (no Demand filed)Where no priority application is filed, the IFD is the date for calculation of all PCT time limits

*may be more than 12 months where the international application contains a restoration-eligible priority claim


18|


application

0|

12*|

16|

(months)

30|

28|

PCT System – Chapter IISR and WOISA Issued

|File PCT

Time limit is the later of: 3 months after the ISA receives

the search copy 9 months after the priority date

Chapter I (no Demand filed)

|International

Search Report (ISR) and Written

Opinion of ISA (WOISA)

ISA: establishes ISR citing relevant prior art

(PCT/ISA/210) rarely, non-establishment of ISR

(PCT/ISA/203) prepares written opinion (PCT/ISA/237)


International Search Report

Form PCT/ISA/210

(second sheet)

Documents Considered to be Relevant

24

International Search Report Cited Documents (References)

Document Categories

Document Citations & Relevant Passages


Three Main Categories of Prior Art in an ISR

• “X” document – Claimed invention lacks

• novelty or • inventive step when considered alone (lacks inventive step = obvious)

• “Y” documents – Claimed invention lacks inventive step

• when two or more documents are used in combination

• “A” document – General state of the art reference


• “P” document− intervening reference − published on or after the priority date but before the IFD− listed as “X,P” or “Y,P” or “A,P”

• “O” document− non-written disclosure − published after the IFD− describes earlier oral disclosure− listed as “X,O” or “Y,O” or “A,O”

• “E” document− U.S. or foreign patent or patent application published on or after

the IFD but having a filing or priority date prior to the IFD− listed as “X,E” or “Y,E” or “A,E”

Three Additional Categories of Prior Art in an ISR


Written Opinion of the ISACover Sheet

Form PCT/ISA/237

(cover sheet)

Contents of the WOISA

28

Written Opinion of the ISABasis of this Opinion

Form PCT/ISA/237

Box No. I

• Basis of this opinion– application as filed

• translated• rectified

– no amendments• in contrast to CH II


WOISAReasoned Statement

Form PCT/ISA/237

Box No. V

Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention

30

Japanese Language IAPublished under the PCT

Bibliographic Page

English translation of Abstract

(always present where publication is not in English)

33

Published IA withArticle 19 amendment

First page of Amended Claims

Stamped as AMENDED SHEET (ARTICLE 19)

34

18|


application

0|

12*|

16|

(months)

30|

28|

PCT System – Chapter IIPRP (CH I)

|File PCT

WIPO prepares an IPRP Chapter I using the WOISA (PCT/IB/373)


|ISR & WOISA

|Art 19


|

|International Preliminary

Report on Patentability

(Chapter I)


Form PCT/IB/373 (cover letter for the WOISA)

IPRP Chapter I

37

18|


application

0|

12*|

16|

(months)

30|

28|

PCT System National Phase Entry from Chapter I

|File PCT

Applicant takes steps to pursue patent protection in various States express intention to enter

national phase pay fees provide translation


|ISR & WOISA

|Art 19


|

|IPRP (CH I)

Enter national phase


Chapter II


Chapter II (optional)Preliminary Examination by the IPEA

• A Demand is filed with an IPEA– usually accompanied by a response to the WOISA

• arguments, and/or• Article 34 amendment to the description, claims, drawings

• Documents issued– International Preliminary Report on Patentability (Chapter II)

(Form PCT/IPEA/409)• usually the only office action issued by the IPEA• no appeal or further prosecution during international stage once

issued

– Written Opinion of the IPEA (Form PCT/IPEA/408) • issued only in extraordinary circumstances


• Each PCT Contracting State reaches agreement– with one/more IPEA to examine international applications

filed in its receiving Office

• IPEA/US is a competent IPEA – for international applications filed in RO/US– regardless of which ISA performed the search

• IPEA/US may be a competent IPEA for IAs filed – in RO/IB

• with some restrictions– in certain other receiving Offices

• where ISA/US performed the search

International Preliminary Examining Authority (IPEA)


18|


application

0|

12*|

16|

(months)

30|

28|

PCT System – Chapter IIFiling of Demand for Chapter II Entry

|File PCT

Applicant “demands” additional examination/analysis

usually based on an amended application and/or arguments

Chapter I

|ISR & WOISA

|Art 19


|

22| | | |

File demand for International preliminary examination

Chapter II

Time limit is the later of 3 months from mailing of

ISR (or 203) and WOISA 22 months after the

priority date


18|


application

0|

12*|

16|

(months)

30|

28|

PCT System – Chapter IIIPRP (Chapter II)

|File PCT

International Preliminary Examining Authority (IPEA) prepares non-binding report on

patentability PCT/IPEA/409 &

PCT/IPEA/416

Chapter I

||

ISR & WOISA

|Art 19


|

|International Preliminary

Report on Patentability

(Chapter II)

22|

Chapter II

||

Demand


IPRP (CH II)Cover Sheet

Form PCT/IPEA/409

Contents of the IPRP (CH II)

44

IPRP (CH II)Basis of the Report

Form PCT/IPEA/409

Box No. I

• Basis of the report– application as amended – in contrast to WOISA


IPRP (CH II)Reasoned Statement

Form PCT/IPEA/409

Box No. V

Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention


18|


application

0|

12|

16|

(months)

30|

28|

PCT System National Phase Entry from Chapter II

|File PCT

Chapter I

||

ISR & WOISA

|Art 19


|

|IPRP(CH II)

22|

Chapter II

||

Demand

Applicant takes steps to pursue patent protection in various States express intention to enter

national phase pay fees provide translation

Enter national phase


The National Stage


National Stage Requirements

• PCT Articles 22 and 39 require furnishing of the following for national/regional stage entry– a copy of the international application

• unless already provided by the International Bureau

– a translation of the international application • where appropriate

– the national fee

• National/Regional Offices may have additional requirements– PCT Applicant’s Guide provides details


35 U.S.C. 371(c) Requirements

(1) Basic national fee

(2) Copy of the IA as filed and an English translation, if applicable

(3) Article 19 amendments, if any, and an English translation, if applicable

(4) Oath/declaration complying with 35 U.S.C. 115 and 37 CFR 1.497

(5) English translation of any annexes to the IPER/IPRP (amendments), if applicable


PATENTSCOPE Available Documents

IPRP(CH I) – PCT/IB/373 and English translation

ISR – PCT/ISA/210

WOISA – PCT/ISA/237and English translation

Priority document

Published international application

November 2014 51

Any questions?


introduction to the patent cooperation treaty charles pearson office of pct legal administration...

Documents

international patent

pct international applications

patent protection

national patent office

international application

pct benefits

pct system

pct functions