thierry sueur vice chairman of the patent working group / unice

Union of Industrial and Employers' Confederations of Europe

Union des Confédérations de l'Industrie et des Employeurs d'Europe

Thierry SUEURThierry SUEURVice Chairman of the Patent Working Group / UNICEVice President / Intellectual Property / AIR LIQUIDEPast President of LES InternationalApril 8-9, 2003

NiceNice

April 8-9, 2003April 8-9, 2003

AIPLA – FICPI Colloquium :AIPLA – FICPI Colloquium :

Reform of the PCTReform of the PCT



PPatent CCooperation T Treaty

Why and how PCT is used ?Why and how PCT is used ?

Advantages and ProblemsAdvantages and Problems




PPatent CCooperation T Treaty

The original goals of the Washington TreatyThe original goals of the Washington Treaty

June 19th, 1970June 19th, 1970

February 3rd, 1989February 3rd, 1989

September 28th, 1997September 28th, 1997

October 3rd, 2001 October 3rd, 2001 (as in force from April 1st, 2002)(as in force from April 1st, 2002)





PPatent CCooperation T TreatyThe Contracting States,The Contracting States,

Desiring to make a contribution to the progress of science and technology,

Desiring to perfect the legal protection of inventions,

Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,

Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,




PPatent CCooperation T Treaty Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed

to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by

providing easily accessible information on the availibility of technological solutions applicable to their special needs andb by

facilitating access to the ever expanding volume of modern technology,

Convinced that cooperation among nations will greatly facilitate the attainment of these aims,

Have concluded the present Treaty : …Have concluded the present Treaty : …




EconomyEconomy Differ (some) translation costsDiffer (some) translation costs

butbut

Transmittal feeTransmittal fee : 60 €

Basic feeBasic fee : 444 €

Designation feeDesignation fee : 480 €

TotalTotal 984 €

+ Search feeSearch fee : 945 €

+ Preliminary exam :Preliminary exam : 1 430€




PCT since new article 22 (1)PCT since new article 22 (1)

No preliminary exam request No preliminary exam request necessary for 30 months validation necessary for 30 months validation

deadline deadline (except Brazil)




ProblemsProblems

Some states are not members of PCT : Some states are not members of PCT : Argentine, Venezuela, Taïwan …

Competent receiving offices, very strict on Competent receiving offices, very strict on formalities formalities (drawings, priority …)




Advantages / DrawbacksAdvantages / Drawbacks

Time for final decision :Time for final decision :

- 1 year is short

- 30 months is better

- (temporary) Budget constraints

Search report Search report

Preliminary examination Preliminary examination

1. 1. From the applicant point of viewFrom the applicant point of view




Advantages / DrawbacksAdvantages / Drawbacks

What is the real final intent of applicant ?What is the real final intent of applicant ?

Need to make (risky) assumption on Need to make (risky) assumption on

applicant’s strategyapplicant’s strategy

1. 1. From the Third Parties point of viewFrom the Third Parties point of view




PPatent CCooperation T TreatyConclusionsConclusions

One filing : One filing : easy (last minute) access

Buy timeBuy time

Access to publications easier but still Access to publications easier but still national applicationsnational applications

Increases risksIncreases risks

thierry sueur vice chairman of the patent working group / unice

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