introduction to the patent cooperation treaty

Introduction to the Patent Cooperation Treaty

Michael Neas International Patent Legal Administration (IPLA) United States Patent and Trademark Office April 2015

April 2015 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


PCT Contracting States

April 2015 8 Patent Cooperation Treaty

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

• 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


0 12

File application

locally

File multiple applications

abroad

(months)

PCT Filing Timeline


0 (months)

File first application

Enter national

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)


Chapter I - Amendment and Publication

• 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

• Written Opinion of the ISA – made available to public by the IB when publication

occurs • along with any informal comments filed by the applicant


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 • CL Chile

*Has not yet commenced operations

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 I International 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 I ISR 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

24

Form PCT/ISA/210 (second sheet)

Documents Considered to be Relevant

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


Three Additional Categories of Prior Art in an ISR

• “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”


Written Opinion of the ISA Cover Sheet

28

Form PCT/ISA/237 (cover sheet)

Contents of the WOISA

Written Opinion of the ISA Basis of this Opinion

• Basis of this opinion – application as filed

• translated • rectified

– no amendments • in contrast to CH II


Form PCT/ISA/237 Box No. I

WOISA Reasoned Statement

30

Form PCT/ISA/237 Box No. V

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

Japanese Language IA Published under the PCT

33

Bibliographic Page

English translation of Abstract

(always present where publication is not in English)

Published IA with Article 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 I Supplementary International Search

|

File PCT


|

ISR & WOISA

| Art 19


| 19

| | (optional) Supplementary International Search Request

Supplementary International

Search Report(s) (SISR) established

|

SISA: • establishes SISR citing relevant

prior art (PCT/SISA/501) ‒ originally-filed claims searched ‒ no written opinion produced

Filed in the IB • prior to 19 months from priority date • indicates a Supplementary ISA (SISA)


18 |


application

0 |

12* |

16 |

(months)

30 |

28 |

PCT System – Chapter I IPRP (Chapter 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 – Chapter I 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


International Preliminary Examining Authority (IPEA)

• 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


18 |


application

0 |

12* |

16 |

(months)

30 |

28 |

PCT System – Chapter II Filing 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


IPRP (Chapter II) Cover Sheet

44

Form PCT/IPEA/409

Contents of the IPRP (CH II)

IPRP (Chapter II) Basis of the Report

• Basis of the report –application as

amended – in contrast to WOISA


Form PCT/IPEA/409 Box No. I

IPRP (Chapter II) Reasoned Statement


Form PCT/IPEA/409 Box No. V

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


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 international application 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

51

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

ISR – PCT/ISA/210

WOISA – PCT/ISA/237 and English translation

Priority document

Published international application

Any questions?

[email protected]

PCT Help Desk @ the USPTO 571-272-4300

8:30 – 5:00 Eastern time, M-F


mailto:[email protected]