About Patent Cooperation Treaty

4

Table of Contents

Overview

Purposes of PCT

Why do we use PCT system

Development course

PCT System

Overview

Patent Cooperation Treaty (PCT) is an international

patent law treaty that provides a unified procedure for

filing patent application to protect inventions in each of

its contracting states.

It is an special international treaty organized by WIPO

that only provides access to member states of Paris

Convention for the Protection of Industrial Property.

Purposes

• save effort (time, work and money)for

applicants & national offices

• increase the likelihood of granting

deserving patents

1. Procedures for obtaining legal protection for inventions

• facilitate and accelerate access by the

public to the technical information

contained in documents describing new

inventions

2. Dissemination of technical

information

Why Do We Use PCT System

1. Bring the world within reach

2. Simplify the filing procedures

3. Postpone both costs and time

4. Provide a strong basis for patenting decisions

5. Alleviate the burden of national offices in member states

Basic Features of PCT System

One application

One language

One patent office

International application/PCT application

Basic Features of PCT System

Formal examination is done by one office

Retrieval is carried out by one office

International publication is made by international office

Examination and authorization are finished by national offices

About These Offices in PCT Application

Receiving Office (RO)

— Office where an applicant might file the international application

International Searching Authority (ISA) — Patent office which performs the search

International Preliminary Examination Authority (IPEA)

— Offices responsible for international preliminary examination

International Bureau (IB) — Belong to WIPO; responsible for international coordination and management of PCT system

Designated Office (DO)

— Office that provides protection for inventions according to the requirements of applicants in international application

Elected Office (EO)

— The contracting states for which the examination is demanded in the claim

Development Course

17-18th

• Patent systems were born and inventions got protection.

• The emergence of Paris Convention in 1883 provides a channel for foreign patent applications.

• Background: issues exist that for the application procedure of one invention to many states, repeated work should be reduced.

• PCT was signed at the Washington Diplomatic Conference.

• On January 24, 1978, PCT went into effect in initial 18 contracting states, and was put into force in June, 1978. Now, PCT has 141 Contracting States.

PCT System

International phase

National and

regional phase

TWO phases are included in the procedure of an international patent application.

!

PCT System

File first

application

0 12

File

PCT

16

International

Search report

and ISA

Written

Opinion

18

International

publication

19

22

OR

File demand

20 30Enter national phase

30

Enter national phase28

International

Preliminary

Examination

(months)

PCT Timeline

typically a national patent application in the home country of the applicant

PCT System － International Phase

•Up to 12 months from the filing date of your local (first) application to file your PCT application with the receiving Office of your national or regional patent Office. Or file PCT application directly with the RO of WIPO if permitted by the national security provisions in your national law.

1. Filling of a PCT application

•At around16 months from the filing date of your local application, an international search report (ISR) and a written opinion from a national or regional patent Office will be received.

2. International search report & written opinion

•The International Bureau of WIPO publishes the PCT application on PATENTSCOPE shortly after 18 months from the priority date of PCT application.

3. International publication

PCT System － International Phase

• The request from supplementary international search may be filed anytime prior to the expiry of 19 months from the priority date. It is completely optional but may be of interest in cases where a more complete overview of the prior art is desired, particularly in respect of specific languages.

4. Supplementary international

search (optional)

• If you are not entirely satisfied with the contents of the written opinion, you may decide to continue the assessment of your invention under the PCT by filing a demand for international preliminary examination with a national or regional patent.

5. International preliminary examination(Optional)

PCT System － National Phase

1. It falls at 30 months from the filing date of the international application or from the earliest priority date of the application if a priority is claimed.

2. In national phase, the patent application is subject to the patent laws, regulations and practices of each country.

3. Rejections on form and content may not be raised provided that they conform to the requirements of the PCT.

PCT System

PCT vsParis

ConventionPCT provides applicants with longer period of time (30 months vs. 12 months)to determine marketing plans,to evaluate the strength of their potential patent, andto be more selective as to the countries in which they will file.

12 File

international

application

0

File first

application

(months)

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