CHAPTER 15 THE PATENT COOPERATION TREATY …...PCT patent prosecution is no harder than US...

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CHAPTER 15 THE PATENT COOPERATION TREATY (PCT) Ch.15: INTRODUCTION The PCT application must be filed on or before 12 months have passed from the earliest priority date. The PCT application can take priority from any number of previous provisional and nonprovisional applications (filed mo more than 12 months before the PCT). The PCT application can also act as the first application (the priority application) for a new family. Although not usually done, new matter (i.e., new inventions or disclosures not found in the priority applications) may be included in a PCT application. The PCT examiners do not try to untangle the priority issues. They leave that to the national stage examiners. Adding new matter is generally considered a bad idea, as it leads to confusion, and to the assumption that the priority date for the entire application is the date of the PCT application. None the less, it is sometimes done. A myth has developed that PCT practice is complex and intimidating. This is not true. PCT patent prosecution is no harder than US prosecution. In many ways it is easier, and you can file a PCT application using EFS-Web just as easily as any other application. There are some important differences from US prosecution, but once you have learned them, you will find that things are pretty logical and straightforward. One important feature of the PCT is that it is very orderly and strict. Dates for certain actions are set and have to be adhered to. Unlike in the US, where you can almost always pay for an extension of time or to start over, the PCT system is not so permissive, and you have to be very careful about deadlines. The Patent Cooperation Treaty (PCT) is a United Nations treaty that was signed in June 1970 and went into operation in June of 1978. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), which is in Geneva, Switzerland. Each country has its own, separate patent system and its own laws, but under the PCT, each participating country agrees to abide by a single, unified international system under which countries can coordinate the early filing and examination stages of patent applications, allowing national patent systems to coexist in harmony with one another. The PCT system does not replace the national patent systems of the member countries; in fact, there is no such thing as a PCT patent. The PCT system merely allows for a unified system of filing, prior art searching, and preliminary examination. Later, the PCT application can be transitioned into a national application, and then into a patent for that country. A patent application filed under the PCT is called an international application, but it is frequently referred to as a PCT application or IA. The timeline of the PCT system (see chart) is split into two stages or chapters, Chapter I and Chapter II. Chapter I starts with the filing of the international application and may then take one of two paths.


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(1) If Chapter II is not elected by the applicant, Chapter I will continue up until the national/regional filing date (30 or 31 months from the priority date).

(2) If Chapter II is elected by the applicant, Chapter I ends at the 19th month following the priority date, and Chapter II begins at that time. Chapter II comprises everything that happens subsequent to the 19th month, up to national/regional 30/31-month filing date. During Chapter I, the PCT application is filed, a prior art search is done, an International Search Report (ISR) is issued, an initial opinion of patentability is produced, and the application, together with the ISR, is published. If Chapter II is not elected, the application proceeds to the 30/31-month national filing deadline. If Chapter II is elected, optional interactive examination between the examiner and the applicant will take place, different types of amendments may be made, and a final patentability opinion is issued. At the end of Chapter II, the patent application, along with its accompanying patentability opinion, enters the national phase, in whichever countries you chose, and the PCT phase is ended. Note that the term national filing includes the filing of a regional application. A regional patent office is one that acts on behalf of several regional countries, bundling prosecution together and issuing a patent enforceable in all the countries in that region. For example, the European Patent Office (EPO) is a regional patent office that acts for all the countries in the European Union and issues a European patent that may be registered and enforced in all the European Union countries. In addition, the individual countries that are members of a region have their own national patent offices, and an applicant may choose, instead, to apply for a patent in one or more individual countries rather than in a region. There are a number of ways of getting an application to the PCT stage (see charts below). You can file a PCT application as the very first (priority/parent) application. But more often an application is first filed as a national application in one country, e.g., the US, Germany, or England. If the applicant wishes to secure foreign rights outside that country, it must then file a PCT application on or before the 12-month date from priority. It does not matter if the priority application is a provisional or a nonprovisional; the PCT MUST be filed on or before 12 months have passed from the earliest priority date. The PCT application is usually filed using EFS-Web, but if you file PCT documents by mail it is very important to understand that mailing rules are not the same as for US prosecution. Certificate of Mailing by First Class Mail and Certificate of Facsimile Transmission procedures cannot be used for filing any papers during the International (PCT) stage if the date of deposit is desired as the date of filing. If filing PCT documents with an Office other than the USPTO, the date of receipt is the date of filing. Facsimile transmission may be used to file a number of documents (See MPEP 1834.01), but since a Certificate of Facsimile Transmission cannot be used to establish a filing date, applicants are discouraged from using fax transmission for all but the most trivial


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documents. It is recommended that Priority Mail Express procedures be used for all mail sent to the USPTO during the PCT process but only when the PCT Office to which correspondence is being sent is the USPTO. As in standard US procedure, Priority Mail Express procedures allow the applicant to claim the date of deposit with the US Post Office as the date of filing. The USPTO‟s EFS-Web system allows electronic filing of PCT applications and subsequent documents using the USPTO as the receiving Office. The World Intellectual Property Organization (WIPO) has its own software for preparing patent documents called PCT-SAFE (http://www.wipo.int/pct-safe/en/). Should the applicant want, the WIPO system may be used in conjunction with the EFS-Web system to prepare applications and other documents using PCT-SAFE and submitting them using EFS-Web. 1. Why do we file an international application under the PCT? Filing an International (PCT) Application simplifies the process of filing foreign patent applications. Many countries do not have the resources at their disposal to conduct searches or have a major patent office examine applications. By filing in one central Office everyone has the same benefits of search and examination for a single fee. In 1978, when the PCT first went into operation, there were 18 Contracting States. Today there are about 150 Contracting States. A Contracting State is a country that is a signatory of the PCT. A list of these countries can be found on the PCT website at http://www.wipo.int/pct/guide/en/index.html . 2. What are some of the advantages of filing under the PCT? First of all, under the PCT, an applicant may reserve the right to pursue patent rights in all PCT-contracting countries (Contracting States) by filing a single International (PCT) Application. The countries provisionally selected are said to be designated. These days, all possible countries are automatically designated when you file a PCT. This single application can be filed in one of a number of accepted languages, which include French, English, German, Japanese, Chinese, and Spanish (but there are rules about what languages you may use depending on the patent office in which you file - more later). The application may be filed at any major international patent office, called a Receiving Office. Both the USPTO and the European Patent Office (EPO) are authorized to act as receiving Offices. So, for example, a US applicant can file a single international application in English, at the USPTO, automatically designating 180+ countries. This really saves you a lot of time and money. It is not until many months later that the applicant must decide whether to take the relatively expensive step of filing separate national stage applications in one or more of the previously designated countries. The PCT application will act as a place-holder until that time. Under the PCT the applicant can delay the costs of translations, foreign filing fees, and the expenses of the local patent agents, all of which are due when that application is filed as a national application in one or more individual countries.

http://www.wipo.int/pct-safe/en/

http://www.wipo.int/pct/guide/en/index.html


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Another benefit to filing under the PCT is that the applicant can have a prior art search and a preliminary examination done, thereby getting an early indication as to what prior art and non-patentability arguments the application will be faced with, all before having to incur the large costs of separate national patent filings and examination. Below is a timeline chart representing the various events which may happen during the life of a PCT patent application. Remember, entering Chapter II is optional, and if Chapter II is not entered, then very little happens to the application between the 19th and 30th month.


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PCT Timeline

An excellent tool is the PCT Time Limit Calculator, provided at the WIPO website at http://www.wipo.int/pct/en/calculator/pct-calculator.html. It is a very good practice tool and is well worth using. Enter your earliest priority date and the calculator will provide the important time limits for the application. Moreover, this page contains many useful links to timelines and PCT rules. Another useful tool provided by the PCT is a PCT Wheel, a round paper calculator that, by sliding one disc over another, displays the due dates and time limits for your application in cutout windows. It is a very easy and reliable method for calculating docket dates. If you have one of these in your office you should try it. The PCT Wheel can be obtained for free from the PCT once per year at a date they announce in the PCT Newsletter (which is also free by email).

http://www.wipo.int/pct/en/calculator/pct-calculator.html


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3. Overview of the PCT Process The form used for entering the PCT is called the Request. The latest version can be found on the USPTO website – go to Patents/forms/more PCT forms/Chapter I. The Request is also found on the PCT Patentscope website (www.wipo.int/patentscope/en/). You should download and print out the Request, and follow along while studying this part of the course. Later in this chapter we will walk you through the Request form step-by-step. When an International (PCT) application is filed, the applicant provisionally designates (or elects) the countries in which patent protection may be sought. Filing of the Request automatically includes provisional designation of all allowable countries for the grant of every kind of protection available (this is a change from past practice). The applicant will later make a final decision, narrowing down the list to just the countries ultimately desired. The applicant is generally given 30 months from the priority date of the application (sometimes 31 months, as in Europe)* to decide whether to take the expensive step of filing the application in one or more individual national patent offices (national/regional filing). This interlude can be used to further assess the patentability of the invention, to test the market, and to raise money. *There is a rare exception to the 30/31 month entry into the National phase. Some countries, under some circumstances, require entry into the national phase at 20 months.– We will discuss this a little later. Within about 16 months of the priority date, the application will be subjected to a prior art search by the International Searching Authority (ISA), which will issue an International Search Report (ISR). The ISR provides a list of patent and non-patent references that the ISA has found and believes to be relevant. The ISR cites the page and line numbers that are thought to be of particular interest. The ISR is not an examination report and does not provide detailed arguments as to why the references are relevant to patentability. The ISR gives the applicant an idea of what prior art references it will be up against should it decide to continue to prosecute the application. The applicant can respond to the ISR by amending the claims (called Article 19 amendments,) but may also choose to make no response. The ISR will be published with the application at about 18 months after the priority date. The ISA will provide a Written Opinion at the same time as it provides the International Search Report. This ISA Written Opinion will be a preliminary, non-binding opinion of patentability. It will separately cover issues of novelty, inventive step, and industrial applicability. Under some circumstances (see below), the Written Opinion is referred to as the International Preliminary Report of Patentability (IPRP). The ISA Written Opinion will be transmitted from the ISA to the International Bureau (IB) as well as to the applicant. The ISA Written Opinion is not published with the application and ISR and is not made available to the public until at least 30 months from the priority date.

http://www.wipo.int/patentscope/en/


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The nomenclature of this ISA Written Opinion or IPRP can appear very confusing, as the patentability opinion given later on under Chapter II of the PCT process by the International Preliminary Examining Authority (IPEA) is also called the Written Opinion or IPRP. Indeed, the Chapter I and Chapter II Written Opinions are usually "similar in content and roughly equivalent" (see PCT Newsletter Dec. 2003). Often they are identical. After the applicant has received the ISA Written Opinion, the applicant may submit written comments to the International Bureau (IB) on a strictly informal basis. Note that there are no specific provisions as to the content or form of such informal comments, but the PCT authorities will allow them so long as they are clearly labeled as "informal comments." This will be the only chance that the applicant will have at this stage to rebut the Written Opinion of the ISA. Such comments are made part of the record, but the IB is under no obligation to consider or respond to them. If a Chapter II Demand is filed (discussed later), there will be an opportunity during that phase for the applicant to engage in interactive prosecution and to make amendments to the specification and the claims. Following receipt of the ISR and the Written Opinion (the IPRP) from the ISA, the applicant is given one opportunity to amend the claims (but not the specification). These are called Article 19 amendments. Article 19 amendments are occasionally done if the prior art brought to light by the ISA so clearly destroys the validity of one or more claims that the attorney deems claim amendments desirable, or sometimes they are done for strategic reasons. More often, though, no Article 19 amendments are made. After about 18 or 19 months from the priority date, the application, together with the ISR (but not including the ISA Written Opinion) is published by the IB and becomes publicly available on the PCT website. At this stage the applicant must decide whether or not to file a Chapter II Demand. If a Chapter II Demand is filed, the application enters Chapter II and the applicant will be given the opportunity to engage in interactive prosecution with the PCT patent examiner and to make amendments to the specification and the claims. If no Chapter II Demand is filed, no further examination will occur, and Chapter I continues until the end of the 30 (or 31)-month deadline. At the end of this time the ISA Written Opinion will be converted (basically just renamed) by the IB into what they call the International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty) (IPRP Chapter I) that will have essentially the same content as the ISA Written Opinion. This IPRP Chapter I will be communicated to the designated Offices by the IB after the 30-month date (PCT rule 44bis) and made available by the IB to the public (PCT rule 44ter and PCT rule 94.1(b)). If the applicant elects Chapter II (by filing a Chapter II Demand), the application enters the interactive examination stage. The examining authority during this stage is called the International Preliminary Examining Authority (IPEA). This name is a little illogical


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since the first examination has already been done by the ISA. The first thing the IPEA will do is to take the ISA Written Opinion and submit it to the applicant as its own first Written Opinion during examination. Unlike under Chapter I, the applicant will then be given the opportunity to amend the claims, the specification (called the description in the PCT), and the drawings. These amendments are called Article 34 amendments. The applicant may submit formal arguments in response to the Written Opinion. The IPEA will respond to these arguments and amendments and issue a further Written Opinion (provided sufficient time is available before entering the national stage). The ultimate result of this International Preliminary Examination is the issuance by the IPEA of an International Preliminary Examination Report (IPER) at about the 28th month from priority. This IPER is also called (and on the form that you receive it is titled) the International Preliminary Report of Patentability (Chapter II of the Patent Cooperation Treaty) or IPRP Chapter II. After the 30/31-month date, this IPRP Chapter II will be transmitted by the IB to each elected Office and be made publicly available. Obviously, the decision of whether or not to file a Chapter II Demand will, in many instances, depend on how positive the Chapter I Written Opinion was. If it indicated patentability of the claimed invention, the applicant may not wish to subject the application to further examination under the PCT. But if the Written Opinion is negative, the applicant may wish to submit arguments and amendments to the IPEA, and so elect Chapter II. A positive IPRP (Chapter I or Chapter II) often has a very influential effect on the examiners during the national phase of prosecution, especially for those Offices that do not themselves have the substantive resources to conduct thorough patent examination. The deadline for filing the Demand (under Article 22(1)) is three months from the date of transmittal of the ISR, or 22 months from the priority date, whichever is later (see exception below). The rare exception to the rule about when and why to file the Chapter II Demand is due to the existence of a small number of countries that have stated that the 30/31 national stage time limit under PCT Article 22(1) is incompatible with their national law. Once upon a time it used to be that all applications had to enter the national phase in all countries at 20 months unless a Chapter II Demand was filed. Filing the Chapter II Demand extended the national entry time limit to 30/31 months, giving the applicant extra time to test, market, and license the invention. More often than not the Chapter II Demand was filed as a delaying tactic. Under these old rules the Chapter II Demand had to be filed by 19 months from priority. The remaining very few countries that have not amended their national laws still use these old rules for Chapter II. In any case, the rule really does not matter in a practical sense because you can always file in these countries at the 30/31 month date using a national/regional patent application. A list of time limits applicable for each designated/elected Office for entering the national phase is available at www.wipo.int/pct/en/texts/pdf/time_limits.pdf

http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf


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At the time of this writing, there were still a few countries that had not resolved the time limit problem under Article 22(1). These countries included Luxembourg (20 months)*, and Tanzania (21 months)**. * If this state is designated for the purpose of a European patent, the 31-month EPO time limit will still apply to entry into the national phase in accordance with Art 23(3). ** If this state is designated for the purpose of an ARIPO patent, the 31-month ARIPO (African Regional Industrial Property Organization) time limit will still apply to entry into the national phase in accordance with Art 23(3). Note: Although this list of states is correct at the time of this writing, it may not be correct at the time of reading. Do not rely on it. Check with the PCT at their website and/or with the national/regional Offices. https://www.wipo.int/pct/en/texts/time_limits.html The PCT system is referred to by WIPO as the Enhanced International Search and Preliminary Examination system (EISPE system). Below is a chart supplied by WIPO that summarizes the EISPE system. Key: IA = International Application, DO = Designated Office, IPE = International Preliminary Examination.


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EISPE Chart:

4. PCT Divisionals and Continuations Just as with US applications, Divisional and Continuation applications can be filed from a pending international application. To file a Divisional or Continuation, use Form PTO/SB/13/PCT. Clear instructions are included on the form.


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Example: PTO/SB/13/PCT (page 1 of 2)


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Example: PTO/SB/13/PCT (page 2 of 2)


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5. INID (internationally agreed numbers for the identification of data) Codes Rather than labeling data with words, many papers from the USPTO and WIPO contain numeric codes to identify the data. These codes are useful to the USPTO and WIPO in helping to identify information filed in different languages and in saving space. However, it can be disconcerting if you receive a document referring to the INID codes and you do not know them. Below is a complete list of INID codes, although you will seldom see or use more than a couple of them. This table is not meant to be memorized but to be kept nearby, as it can be useful in deciphering PCT, IDS, or other documents from the USPTO and WIPO. Data in italics = categories * = most used INID code

Meaning

10 *Identification of the patent or patent document 11 *Number of the patent or patent document 12 Plain language designation of the kind of document 13 Kind of document code according to WIPO Standard ST.16 15 Patent correction information 19 WIPO Standard ST.3 code, or other identification, of the Office or organization publishing the

document 20 *Data concerning the application for a patent 21 Number assigned to the application 22 *Date of filing of application 23 Other date(s), including date of filing complete specification following provisional

specification and date of exhibition 24 *Date from which industrial property rights may have effect 25 *Language in which the published application was originally filed 26 Language in which the application is published 30 Data relating to priority under the Paris Convention 31 *Number(s) assigned to priority application(s) 32 *Date(s) of filing of priority application(s) 33 WIPO Standard code identifying the national industrial property Office allotting the priority

application number or the organization allotting the regional priority application number; for international applications filed under the PCT, the code "WO" is to be used

34 For priority filings under regional or international arrangements, the WIPO standard code identifying at least one country party to the Paris Convention for which the regional or international application was made

40 Date(s) of making available to the public 41 Date of making available to the public by viewing, or copying on Request, an unexamined

patent document, on which no grant has taken place on or before the said date 42 Date of making available to the public by viewing, or copying on Request, an examined

patent document, on which no grant has taken place on or before the said date 43 Date of making available to the public by printing or similar process of an unexamined

patent document, on which no grant has taken place on or before the said date 44 Date of making available to the public by printing or similar process of an examined patent

document, on which no grant or only a provisional grant has taken place on or before the said date

45 Date of making available to the public by printing or similar process of a patent document, on which grant has taken place on or before the said date

46 Date of making available to the public the claim(s) only of a patent document 47 Date of making available to the public by viewing, or copying on Request, a patent document


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on which grant has taken place on or before the said date 48 Date of issuance of a corrected patent document 50 Technical information 51 International Patent Classification 52 Domestic of national classification 54 *Title of the invention 56 List of prior art documents, if separate from descriptive text 57 Abstract or claim 58 Field of search 60 *References to other legally or procedurally related domestic or previously domestic patent

documents including unpublished applications therefore 61 Number and, if possible, filing date of the earlier application, or number of the earlier

publication, or number of earlier granted patent, inventor’s certificate, utility model or the like to which the present document is an addition

62 Number and, if possible, filing date of the earlier application from which the present patent document has been divided up

63 Number and filing date of the earlier application of which the present patent document is a Continuation

64 Number of the earlier publication which is "reissued" 65 Number of a previously published patent document concerning the same application 66 Number and filing date of the earlier application of which the present patent document is a

substitute, i.e., a later application filed after the abandonment of an earlier application for the same invention

67 Number and filing date of a patent application, or number of a granted patent, on which the present utility model application or registration (or a similar industrial property right, such as a utility certificate or utility innovation) is based

68 For an SPC, number of the basic patent and/or, where appropriate, the publication number of the patent document

70 *Identification of parties concerned with the patent 71 *Name(s) of applicant(s) 72 *Name(s) of inventor(s) if known to be such 73 *Name(s) of grantee(s), holder(s), assignee(s) or owner(s) 74 *Name(s) of attorney(s) or agent(s) 75 *Name(s) of inventor(s) who is (are) also applicant(s) 76 *Name(s) of inventor(s) who is (are) also applicant(s) and grantee(s) 80 Identification of data related to International Conventions other than the Paris

Convention and to legislation 81 *Designated State(s) according to the PCT 83 Information concerning the deposit of microorganisms, e.g., under the Budapest Treaty 84 *Designated Contracting States under regional patent conventions 85 Date of commencement of the national phase pursuant to PCT Article 23(1) or 40(1) 86 *Filing data of the PCT international application, i.e. international filing date, international

application number, and, optionally, the language in which the published international application was originally filed

87 *Publication data of the PCT international application, i.e. international publication date, international publication number, and, optionally, the language in which the application is published

88 *Date of deferred publication of the search report 90 *With respect to SPC‟s (Supplemental Protection Certificate) 91 Date on which an international application filed under the PCT no longer has an effect in one

or several designated or elected States due to failure to enter the national or regional phase or the date on which it has been determined that it had failed to enter the national or regional phase


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92 *For an SPC, number and date of the first national authorization to place the product on the market as a medicinal product

93 *For an SPC, number, date and, where applicable, country of origin, of the first authorization to place the product on the market as a medicinal product within a regional economic community

94 *Calculated date of expiry of the SPC or the duration of the SPC 95 *Name of the product protected by the basic patent and in respect of which the SPC has been

applied for or granted 96 *Filing date of the regional application, i.e., application filing date, application number, and,

optionally, the language in which the published application was originally filed 97 *Publication data of the regional application (or of the regional patent, if already granted),

i.e., publication date, publication number, and, optionally, the language in which the application (or, where applicable, the patent) is published

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CHAPTER 15 THE PATENT COOPERATION TREATY …...PCT patent prosecution is no harder than US...

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