Patent Cooperation Treaty - Presentation by Vinita Radhakrishnan at UPES School of Law

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Transcript of Patent Cooperation Treaty - Presentation by Vinita Radhakrishnan at UPES School of Law

  1. 1. 2017 1
  2. 2. HISTORY International Exhibition of Invention in Vienna (1873) Paris Convention (1883) National Treatment Priority Common Rules Jurisdictional Rights Right to Inventorship BIRPI - United International Bureau for the Protection of IP (1893) WIPO (1970): Member state led intergovernmental organization PCT (1978) (IN: Dec 7, 1998) WTO/TRIPs (1995)
  3. 3. RIGHT TO PRIORITY Art 4 of Paris Convention Benefit from one or more earlier filed convention application within 12 months period For prior art purpose the later application considered to be filed on the date of first filing Multiple and partial priority Insulated from the fate of the earlier application March 2014 Confidential 3
  4. 4. PRIORITY DATE Filing date of the application from which priority is claimed In case of multiple priority, filing date of the earliest Date of filing of the PCT application, if priority not claimed Priority document to be furnished To RO within 16 months from the priority date To IB before publication March 2014 Confidential 4
  5. 5. EXERCISE Inventor files an Indian patent application on 4th July 2016, disclosing invention A. Inventor files a second Indian patent application on, 9th July 2016, disclosing inventions A and B. What is the last date on which the inventor can file a PCT application directed to invention A? What is the last date on which the inventor can file a US application directed to invention A? What is the last date on which the inventor can file a PCT application claiming priority from both the application? What is the last date on which the inventor can file the application in Afghanistan? On 8th July 2017, the inventor wishes to file a PCT claiming both application. Comment! March 2014 Confidential 5
  6. 6. EXERCISE Apple files an application with respect to an imaging processing system in India on 1st Feb 2017. Orange files a patent application for the same image processing system on 1st March 2017 in Japan. Banana files a patent application with respect to the same invention in Myanmar on 14th Feb 2017. Apple, Orange and Banana file patent applications in Germany on 14th March 2018, 14th January 2018 and 14th July 2017 claiming priority from their prior applications. Apple, Orange and Banana file patent applications in Germany on 14th January 2018, 14th July 2017 and 14th March 2017 respectively respectively claiming priority from their prior applications. All 3 file patent applications in Germany on 14th March 2018. March 2014 Confidential 6
  7. 7. NATIONAL TREATMENT Grant same protection as Nationals Prohibits discrimination March 2014 Confidential 7
  8. 8. PCT Treaty signed on 19 June 1970 Entered into force on 21 January 1978 with18 contracting states Accession- any Paris Convention member 152 contracting states Centralized filing system: does not eliminate the necessity of prosecuting national patents Objectives: Filing Search and examination Information dissemination Advantages Time Cost Effort
  9. 9. PCT HIGHLIGHTS One set of formality requirement International Search International Publication International Preliminary examination Opportunity to amend before national phase Cost of multiple filings and translation postponed March 2014 Confidential 9
  10. 10. MINIMUM REQUIRMENT FOR AN INTERNATIONAL FILING DATE Application must contain Intention of filing International application Request Name of applicant Description at least one claim Not mandatory for filing date: Fees, Signature, Title, Abstract, Drawings and translations March 2014 Confidential 10
  11. 11. PCT APPLICANT Natural Person/ Legal Entity Different applicant for different Contracting State At least one applicant resident/national of a contracting state March 2014 Confidential 11
  12. 12. AGENT Any person who has the right to practice before the RO Any person who has the right to practice before the ISA and/or IPEA March 2014 Confidential 12
  13. 13. WHERE TO FILE National Office International Bureau of WIPO Regional Office March 2014 Confidential 13
  14. 14. EXERCISE Mr. Helsinki from Finland develops an invention when he is working for a NGO in Ethiopia. The Ethiopian NGO wishes to file a PCT application. What will your filing strategy be? March 2014 Confidential 14
  15. 15. PCT PHASES International phase National phase
  16. 16. TIMELINES
  17. 17. INTERNATIONAL PHASE Various authorities involved in the International phase Receiving office International Searching Authority International Bureau International Preliminary Examination Authority (if elected)
  18. 18. RECEIVING OFFICE (RO) FILING Determination of RO Fees Designating states Elements of International application Request (Form PCT/RO/101) Description Claim(s) Abstract, Drawing(s) (if any) Do a formality examination
  19. 19. ELEMENTS OF AN APPLICATION Request Description Claims Abstract Drawings (if applicable) Sequence listing (if applicable) Microorganism deposition details (if applicable) Translation (if applicable) Priority document (if applicable) March 2014 Confidential 19
  20. 20. REQUEST ePCT- Filing PCT- SAFE (fully electronic) Means provided by RO Request form: PCT/RO/101 March 2014 Confidential 20
  21. 21. INTERNATIONAL SEARCHING AUTHORITY (ISA): Novelty Analysis Objective of International Search Selection of ISA (AT, AU, CN, IN, EP, US, SE) Establishment of ISR Single invention/inventive concept Establishment of written opinion Assessment of invention Report transmission: IB and Applicant IPRP(I) no demand is filed
  22. 22. INTERNATIONAL BUREAU (IB) Publication Time of Publication Languages of publication Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish.
  23. 23. INTERNATIONAL PRELIMINARY EXAMINATION AUTHORITY (IPEA) Optional Step: Demand based (PCT/IPEA/401) Aim Filing demand for examination Selection of IPEA Formalities examination Competent IPEA Time period Fees Examination Opinion on patentability + ISR = first written opinion (IPER) Amendments Transmission of IPRP(II) Assessment
  24. 24. NATIONAL PHASE Regional agreements National fees Translation if required
  25. 25. EXERCISE PORTAGIN Inc. engages you for filing a PCT Application whose deadline falls on the 31st of March, 2017. On the way to the patent office you meet with a minor accident and cannot make it to the office at the prescribed time. What can you do to save the application? March 2014 Confidential 25
  26. 26. EXERCISE LAZYBUM, a multinational company is a client of yours who has a deadline to file a PCT application 4th July 2017. After repeated follow ups they finally give you a go ahead to file the PCT on the early morning of 5th July 2017 What will be your filing strategy? March 2014 Confidential 26
  27. 27. EXERCISE SPOCKS a socks company files a PCT application on 1st Nov, 2013. It then files a US National Phase application on 1st Nov, 2016. Is the application valid. Advise March 2014 Confidential 27
  28. 28. Thank You Confidential 28 Vinita Radhakrishnan Senior Partner - BananaIP Counsels Email: [email protected] Phone: +91 9845837306 2016