Patent Cooperation Treaty (PCT)- Practice Overview

Patents- Practical Aspects of International Patent Procurement/Prosecution

June 2015

Patent Cooperation Treaty (PCT) Practice Overview

Patent Foreign Filing• Options

– Directly file– Paris Convention– PCT (Patent Cooperation Treaty)

• Paris Convention– Shorter deadlines to decide where to file (1 year)– Overall, typically less expensive than PCT

• PCT– Longer time on where to file (30 months)– Usually, more expensive

Paris Convention- Overall Procedure• Paris Convention

– Utility Patents- One year to foreign file from original filing date

– Design Patents/Industrial Designs- Six months to foreign file from original filing date

• What about non-Paris Convention (and non-PCT) Countries– Some provide a one year grace period to file

(e.g., Taiwan)– Most have an absolute novelty requirement, so

you need to file before disclosure

Overall Procedure• Paris Convention Deadlines Utility Patent

US App.

Foreign App. Foreign App. Foreign App.

One Year fromUS Filing Date

Paris Convention- Why Pick?• Reasons to Pick Paris Convention Filing

– Less Expensive Overall– Less Delay – Know the Specific Countries & Client Will Not

Change Mind in the Future

• Reasons to Not Pick Paris Convention Filing– Uncertain where to file (e.g., not sure about

market)– Want to delay to give more time to develop

product, market, etc.– More fees up front with Paris Convention

Paris Convention

Foreign Associate

US Attorney

Foreign IP OfficeUSPTO


Foreign IP Office


Foreign Associate

• 7

PCT General Information

• Generally worldwide, about 50% of all cases foreign filed are filed through the PCT.

• Currently 148 country members to PCT.

• PCT preserves your right to foreign file for an additional 18 months.

• 8

PCT- Overall Procedure- Example #1

PCT App.

Foreign App. Foreign App. Foreign App.

US App. One Year fromUS Filing Date

To File PCT Application

Generally, 30 Months fromUS Filing DateTo File Foreign

Applications

• 9

PCT- Overall Procedure- Example #2

PCT App.

Foreign App. Foreign App. US App.

Generally, 30 Months fromPCT Filing Date

To File Foreign & USApplications

PCT General Procedure• Filing: with a national or regional patent Office or WIPO, complying with the PCT formality requirements,

in one language, and one set of fees.

• International Search: an “International Searching Authority” (ISA) identifies the published patent documents and technical literature (“prior art”) and establishes a written opinion on invention’s potential patentability.

• International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of international application is published.

• Supplementary International Search (optional): a second ISA identifies, at applicant’s request, published documents which may not have been found by the first ISA which carried out the main search.

• International Preliminary Examination (optional): one of the ISAs, at applicant’s request, carries out an additional patentability analysis.

• National Phase: after the end of the PCT procedure, usually at 30 months from the earliest priority date, applicant starts to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which the applicant wants to obtain them.

Overview of PCT System

From: http://www.wipo.int/pct/en/faqs/faqs.html

http://www.wipo.int/pct/en/faqs/faqs.html



PCT Terminology• Offices

• Receiving Office (RO)- office in which the International Application must be filed. For our purposes, the USPTO will be the RO, but in some circumstances the International Bureau (IB) will also act as the RO for U.S. residents and nationals.

• International Searching Authority (ISA)- responsible for the patent search and initial written opinion. In the Request form you can select U.S., AU, Korea, EPO, etc. as the ISA. Note the EPO has limitations as to subject matter that will be searched. The ISA is normally responsible for the International Search Report and Written Opinion, but the IPEA (see below) has the discretion to issue its own written opinion.

• International Bureau (IB)- maintains the master file of all international applications and acts as publisher as well as central coordinating body. The World Intellectual Property Organization in Geneva, Switzerland performs the duty of the IB.

PCT Terminology• Offices

– International Preliminary Examining Authority (IPEA)- The IPEA establishes the International Preliminary Examination Report (IPER) which presents the examiner’s final position as to whether the claim is novel, involves an inventive step, and is industrially applicable. The ISA normally creates the initial written opinion, but the IPEA has the discretion to issue its own written opinion.

– Designated Office (DO)- is the national patent office acting for the state or region designated under Chapter I. Generally, it is where you can nationalize the application under Chapter I. (Not that important now.)

– Elected Office (EO)- is the national patent office acting for the state or region elected under Chapter II. Generally, it is where you can nationalize the application under Chapter II. (Not that important now.)

PCT Terminology• Chapter I

– Examination without interaction between applicant and examiner

– Automatic- Default– Examination Result= International Preliminary

Report on Patentability (IPRP) (i.e., ISA-WO)

• Chapter II– Examination with interaction (argument) between

applicant and examiner – Requires Filing of a Demand + Fee– Examination Result= International Preliminary

Examination Report (IPER) (IPEA issues)

PCT Terminology• Paperwork

• International Search Report (ISR)- consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step (non-obviousness).

• X= Novelty • Y= Inventive Step• A= Of Interest

Chapter 1


• Written Opinion (WO)- is a preliminary and non-binding opinion by the ISA on whether the invention appears to meet the patentability criteria in light of the search report results. The WO is sent together with the ISR to the Applicant’s representative.

Chapter 1


• International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an International Preliminary Examination Report (IPER) has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority (ISA). In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

Chapter 1


• International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

Chapter 2

PCT History Lesson

• Priority

• PCT Application Filed

• Search by ISA

• Int’l Publicati

on + ISR

• Deadline to File

Demand for Chapter II Examinatio

n

• Chapter I

National Phase

Deadline

O Months

< 12 Months

16 Months

18Months

19 Months

20 Months

Pre- April 2002

NO DEMAND- NEEDED TO NATIONALIZE BY CHAPTER I DEADLINE

PCT History Lesson

• Priority


• Search by ISA


on + ISR



n

• Chapter I

National Phase

Deadline

O Months

< 12 Months

16 Months

18Months

19 Months

20 Months

Pre- April 2002

DEMAND FILED Chapter II

PCT History Lesson

• Chapter I National Phase

Deadline

• Chapter II National Phase

Deadline

2O Months

30 Months

Pre- April 2002

DEMAND EXTENDEDDEADLINE TO

30 MONTHS

PCT History Lesson

• Priority


• Search by ISA


on + ISR



n

• National Phase

Deadline

O Months

< 12 Months

16 Months

18Months

19 Months

30 Months

Post April 2002

DEMAND DOES NOTMATTER- STILL GET 30 MONTHS

TO NATIONALIZE

PCT AMENDED

PCT History Lesson• “Reservation” Countries- Gave Notice that National

Laws Not Compatible with Amended PCT – Deadlines without Demand- Still the 20th month

Chapter I deadline to nationalize the application–

Only applies to a limited number of countries: Luxemburg; Tanzania; and Uganda.

Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II deadline through regional patent offices (EPO or ARIPO).

Filing a Demand for Chapter II examination by the 19th month will extend the deadline to directly nationalize in Luxemburg, Tanzania, and Uganda to the Chapter II deadline (30th month).

PCT History Lesson• ISA now issue ISR and WO

• Demand for International Preliminary Examination (Chapter II) – Deadline Changed to Later of:

22 Months or 3 Months From Mailing Date of ISR/WO

• Why Now File a Demand for Examination?– Examiner Interaction- Get Positive IPER– Make Amendments to Spec. and Drawings

PCT Pointers• Chapter II

– Provides for additional procedures for examination of the international application.

– Deadline to nationalize the application is at least 30 months from the earliest priority date.

– For most countries, the application automatically has the Chapter II deadline

Again, exceptions are Luxemburg, Tanzania, and Uganda,

PCT Pointers• Calculation of docket

deadlines is based on the earliest priority date claimed.

• Chapter I and Chapter II- distinction is less important under current PCT practice

PCT Filing

PCT TimetablePCT Timetable

Months from Earliest Priority Date Deadline/Action

8th Month Send Letter to Client Requesting Foreign Filing Instructions-What you need to do- Send the foreign filing letter.

10th-12th Month Send Reminder Letter(s)/Call Client for Foreign Filing InstructionsWhat you need to do- Remind client until you receive instructions

12th Month Deadline to File PCT ApplicationWhat you need to do- Prepare the PCT Request, application, and transmittal. On the Request, designate which figure should appear on the face of the published application and add/indicate the reference numerals that should be in the abstract for the designated figure.

14th Month Typically, receive by this deadline:-Filing Receipt (RO/105, ISA/202 & RO/102)-Record Copy Received by International Bureau (IB/304)Deadline-Restoration of Priority Deadline- In case you missed the 1 year Paris Convention DeadlineWhat you need to do- Report Filing Receipt to client.

16th Month Priority Document Deadline- This is the final deadline to update your priority claim as well as submit certified copies of the applications from which you are claiming priority. Normally list the priority applications on the Request when the application is filed. This deadline only applies when waiting on the application number for the international application.What you need to do- Make sure your priority claim is correct.

PCT- Short Flow Chart

• Priority


• Restoration of

Priority Deadline

• Search by ISA

• Int’l Publication + ISR


Demand for

Chapter 1

CountriesO

Months< 12

Months14

Months16

Months18

Months19

Months

PCT- Short Flow Chart

• Chapter 1 Deadline

to Nationaliz

e

• Deadline- Demand

Examination &

Response to

Written Opinion

• Examination by IPEA

• Target Date to Issue

IPRP by ISA (for Chapter

1) or IPEA

(Chapter 2)

• Chapter 2 Deadline

(Most Countries

)

• Chapter 2 Deadline (A Few

Countries)

20 Months

28 Months

30Months

31 Months

22 Months

PCT Application- Pre-filing Checklist Get Applicant and Inventor Information

Nationality may impact Receiving Office (RO)Foreign Filing License Granted/Needed

Pick Receiving Office (RO) USPTO IB

Pick International Searching Authority (ISA) Speed, Price, Where Nationalizing, etc.

Prepare Paperwork (format A4)

PCT Filing- Typical Flow

US Attorney USPTO (RO) Int’l Bureau (IB)

PCT Application

Request

PCT Application

Request Contents• Inventor(s)/Applicant(s)• Designate Agent• Not Designate Countries (DE, JP, KR)• Priority Claim & Documents• Pick Int’l Searching Authority (ISA)• Representative Figure

PCT Filing- Unusual Flow

US Attorney Int’l Bureau (IB) + RO

PCT Application

RequestDirectly File with IB• No Applicant is US Resident or

National (but a resident/national of PCT Contracting State)

• Restoration of Priority- within 2 month window after 12 Month Paris Convention Deadline

PCT Receiving Office (RO)• How to Pick a Receiving Office (RO)

– Depends on where applicant is a national or residence

• Two Options– Applicant’s National Patent Office (if allowed)

Normally, USPTO– WIPO International Bureau (IB)

• From US Perspective, if no US Applicant, need to file with IB as RO and pick local attorney to prosecute.

Filing USPTO as Receiving Office (RO)1. Familiarity with E-filing procedures.

2. File pdf’s of documents.

3. Instant Electronic Acknowledgment.

4. Payment via Credit Card in US Dollars.

5. Access to Documents in Private PAIR.

6. For invention made in the US, no separate request for a foreign filing license is needed.

Filing WIPO-IB as Receiving Office (RO)1. Will need to obtain a WIPO Digital Certificate

for each person who will physically file the applications.

2. The Digital Certificate must be used ONLY on the computer on which it was validated.

3. The Digital Certificate must be renewed every two years.

4. Will need to download and use PCT Easy software, which needs updating regularly.

Filing WIPO-IB as Receiving Office (RO)5. Will need to open a WIPO Deposit Account

1. Otherwise, file an application at the International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card.

2. You may have added conversion fees from US $ to Swiss francs on your credit card bill.

3. Pay by bank transfer to WIPO’s bank account or postal account

6. Will never have access to complete file history.

Filing WIPO-IB as Receiving Office (RO)7. If invention made in the US, you will need a

foreign filing license from the USPTO to file a PCT application at the IB.

8. Can file via fax; however, original must be delivered within 14 days from the fax transmission (FedEx preferred).

9. Lose valuable filing time since WIPO is six hours ahead of us.

PCT Searching Authorities (ISA)• Right Now, You Can Select From Among

Several Patent Offices to Conduct the Search

• US Searching Authorities Include– USPTO– EPO (European Patent Office)– KIPO (Korea)– Australia (IPAU)– Russia (Rospatent)– Israel (ILPO)

• Note: Option Secondary ISA

PCT Searching Authorities (ISA)

Receiving Office (RO) US or IB

ISA/US ISA/EP ISA/KR ISA/AU ISA/RU ISA/IL

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Australia $1,925 Less expensive thanEurope

Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions.

Europe $2,366 Perceived high quality search

Expensive, and it will not conduct searches for applications that concern some types of technologies.

Korea $1,219Inexpensive and receive results relatively quickly.

Limits the technology of applications that can be searched.

United States of America $2080 Perceived high

quality searchExpensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Russia $704 Inexpensive No experience.

Israel $969 Inexpensive Limited number of applications allowed

Need More Information?

Please Contact:

Chuck Schmal ([email protected])

Woodard, Emhardt, Moriarty, McNett & Henry LLP111 Monument Circle, Suite 3700

Indianapolis, IN 46204(317) 634-3456

www.uspatent.com

Patents- Practical Aspects of International Patent Procurement/Prosecution

June 2015

Patent Cooperation Treaty (PCT) Practice Overview

Patent Cooperation Treaty (PCT)- Practice Overview

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