patent cooperation treaty
DESCRIPTION
A Presentation by Mr. Nishant KewalramaniTRANSCRIPT
PATENT COOPERATION TREATY
By
Nishant KewalramaniPartner
Brain League
PATENT COOPERATION TREATY
Treaty signed on 19 June 1970
Entered into force on 21 January 1978 with18 contracting states
Accession- any Paris Convention member
As of 2012- 146 Contracting States
PHASES
International phase
National phase
FILING
PCT Easy
PCT Safe
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Typically a national patent application in the home country of the applicant
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Report on state of the art (prior art documents and their relevance) + initial patentability opinion
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Disclosing to world content of application in standardized way
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Request an additional patentability analysis on basis of amended application
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Additional patentability analysis, designed to assist in national phase decision-making
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
The PCT System--typical use, in more detail
(months)
File PCTapplication
120 30
International search report & written opinion
16 18
Internationalpublication
(optional)File demand forInternational preliminary examination
File localapplication
Enternationalphase
22 28
(optional)International preliminary report on patentability
Express intention and take steps to pursue to grant in various states
Slide taken from Kim Jay Hyon’s ppt on PCT at Panorama Business School
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 Subject of International application Designating states Elements of International application
Request (Form PCT/RO/101) Description Claim(s) Abstract, Drawing(s) (if any)
INTERNATIONAL SEARCHING AUTHORITY (ISA)
Objective of International Search Selection of ISA Establishment of ISR Establishment of written opinion Assessment of invention 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 Filing demand for examination Selection of IPEA Formalities examination
Competent IPEA Time period Fees
Examination Opinion on patentability + ISR = first written opinion Amendments Transmission of IPRP(II)
Assessment
NATIONAL PHASE
Regional agreements
National fees
Translation if required
NATIONAL PHASE ENTRY
INDIA – 31 MONTHS
Treated as any other national application after the entry.
Early entry possible upon payment of extra fee.
WHY PCT
More Time
Pushing Costs
Opinion on patentability
