patent cooperation treaty - presentation by vinita radhakrishnan at upes school of law
TRANSCRIPT
HISTORY• International Exhibition of Invention in Vienna
(1873)• Paris Convention (1883)
– National Treatment– Priority– Common Rules
• Jurisdictional Rights• Right to Inventorship
• BIRPI - United International Bureau for the Protection of IP (1893)
• WIPO (1970): Member state led intergovernmental organization
• PCT (1978) (IN: Dec 7, 1998)• WTO/TRIPs (1995)
RIGHT TO PRIORITY
• Art 4 of Paris Convention
• Benefit from one or more earlier filed convention application within 12 months period
• For prior art purpose the later application considered to be filed on the date of first filing
• Multiple and partial priority
• Insulated from the fate of the earlier application
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PRIORITY DATE
• Filing date of the application from which priority is claimed
• In case of multiple priority, filing date of the earliest
• Date of filing of the PCT application, if priority not claimed
• Priority document to be furnished– To RO within 16 months from the priority date
– To IB before publication
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EXERCISE
• Inventor files an Indian patent application on 4th July 2016, disclosing invention A. Inventor files a second Indian patent application on, 9th July 2016, disclosing inventions A and B.
– What is the last date on which the inventor can file a PCT application directed to invention A?
– What is the last date on which the inventor can file a US application directed to invention A?
– What is the last date on which the inventor can file a PCT application claiming priority from both the application?
– What is the last date on which the inventor can file the application in Afghanistan?
– On 8th July 2017, the inventor wishes to file a PCT claiming both application. Comment!
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EXERCISE
Apple files an application with respect to an imaging processing system in India on 1st Feb 2017. Orange files a patent application for the same image processing system on 1st March 2017 in Japan. Banana files a patent application with respect to the same invention in Myanmar on 14th Feb 2017.
– Apple, Orange and Banana file patent applications in Germany on 14th March 2018, 14th January 2018 and 14th July 2017 claiming priority from their prior applications.
– Apple, Orange and Banana file patent applications in Germany on 14th January 2018, 14th July 2017 and 14th March 2017 respectively respectively claiming priority from their prior applications.
– All 3 file patent applications in Germany on 14th March 2018.
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NATIONAL TREATMENT
• Grant same protection as Nationals
• Prohibits discrimination
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PCT
• Treaty signed on 19 June 1970• Entered into force on 21 January 1978 with18 contracting states• Accession- any Paris Convention member• 152 contracting states• Centralized filing system: does not eliminate the necessity of
prosecuting national patents• Objectives:
– Filing– Search and examination – Information dissemination
• Advantages– Time– Cost– Effort
PCT HIGHLIGHTS
• One set of formality requirement
• International Search
• International Publication
• International Preliminary examination
• Opportunity to amend before national phase
• Cost of multiple filings and translation postponed
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MINIMUM REQUIRMENT FOR AN INTERNATIONAL FILING DATE
• Application must contain– Intention of filing International application
– Request
– Name of applicant
– Description
– at least one claim
• Not mandatory for filing date:– Fees, Signature, Title, Abstract, Drawings and
translations
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PCT APPLICANT
• Natural Person/ Legal Entity
• Different applicant for different Contracting State
• At least one applicant resident/national of a contracting state
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AGENT
• Any person who has the right to practice before the RO
• Any person who has the right to practice before the ISA and/or IPEA
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WHERE TO FILE
• National Office
• International Bureau of WIPO
• Regional Office
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EXERCISE
Mr. Helsinki from Finland develops an invention when he is working for a NGO in Ethiopia. The Ethiopian NGO wishes to file a PCT application.
What will your filing strategy be?
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INTERNATIONAL PHASE
• Various authorities involved in the International phase
– Receiving office
– International Searching Authority
– International Bureau
– International Preliminary Examination Authority (if elected)
RECEIVING OFFICE (RO) – FILING
• Determination of RO• Fees• Designating states• Elements of International application
– Request (Form PCT/RO/101)– Description– Claim(s)– Abstract,– Drawing(s) (if any)
• Do a formality examination
ELEMENTS OF AN APPLICATION
• Request• Description• Claims• Abstract • Drawings (if applicable)• Sequence listing (if applicable)• Microorganism deposition details (if applicable)• Translation (if applicable)• Priority document (if applicable)
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REQUEST
• ePCT- Filing
• PCT- SAFE (fully electronic)
• Means provided by RO
• Request form: PCT/RO/101
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INTERNATIONAL SEARCHING AUTHORITY (ISA): Novelty Analysis
• Objective of International Search
• Selection of ISA (AT, AU, CN, IN, EP, US, SE)
• Establishment of ISR
• Single invention/inventive concept
• Establishment of written opinion
• Assessment of invention
• Report transmission: IB and Applicant
• IPRP(I) – no demand is filed
INTERNATIONAL BUREAU (IB) –Publication
• Time of Publication
• Languages of publication
– Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish.
INTERNATIONAL PRELIMINARY EXAMINATION AUTHORITY (IPEA)
• Optional Step: Demand based (PCT/IPEA/401)
• Aim
• Filing demand for examination
• Selection of IPEA
• Formalities examination– Competent IPEA
– Time period
– Fees
• Examination– Opinion on patentability + ISR = first written opinion (IPER)
– Amendments
– Transmission of IPRP(II)
• Assessment
EXERCISE
• PORTAGIN Inc. engages you for filing a PCT Application whose deadline falls on the 31st of March, 2017. On the way to the patent office you meet with a minor accident and cannot make it to the office at the prescribed time.
– What can you do to save the application?
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EXERCISE
• LAZYBUM, a multinational company is a client of yours who has a deadline to file a PCT application 4th July 2017. After repeated follow ups they finally give you a go ahead to file the PCT on the early morning of 5th July 2017
– What will be your filing strategy?
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EXERCISE
• SPOCKS a socks company files a PCT application on 1st Nov, 2013. It then files a US National Phase application on 1st Nov, 2016.
– Is the application valid.
– Advise
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Thank You
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Vinita Radhakrishnan
Senior Partner - BananaIP Counsels
Email: [email protected]
Phone: +91 9845837306
2016