THE PATENT COOPERATION TREATY (PCT) Practical Considerations in Managing PCT Applications Geneva, November 26, 2008

THE PATENT COOPERATION TREATY(PCT)

Practical Considerations in ManagingPCT Applications

Geneva, November 26, 2008

• MAIN PRACTICAL CONSIDERATIONS

– Time limits– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative– Comparison between certain filing options– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and

withdrawals– International publication– Optional demand for preliminary examination– Entry into national phases


– Time limits

– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative– Comparison between certain filing options– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and withdrawals– International publication– Optional demand for preliminary examination– Entry into national phases

International Preliminary Examining Authorities(IPEA)

International Searching

Authorities(ISA)

Inventions

Receiving Offices(national, regionalor international)

are filed with

PCTInternationalApplications

are the objects of

International Bureau

transmit applications to

transmit Reports2

to

publishes

PCT International Applications

communicates to

Designated Offices3

(national and/or regional patent Offices)

grant

12Months from Priority Date1

Applicationsfiled with

Patent Offices1

(Priority Date)

0 16 18 22 28 30

PCT InternationalApplications filed

with Receiving Offices(International Filing Date)

Transmittals of ISR &

Written Opinions

Publications of PCT

InternationalApplications

Applicantsdemand IPRP II

(optional)

Transmittalsof IPRP II(optional)

PCT National Phase Entries

(where applicants seek protection)

International Phase National Phaseand/or regional phase

Patents

1 Generally, applicants first file a national or regional patent application with their patent Office, and within 12 months from priority date, file a PCT international application at a receiving Office.2 ISAs transmit International Search Reports (ISRs) & the Written Opinions / IPEAs transmit International Preliminary Reports on Patentability II (IPRP II).3 Called Elected Offices for Applicants having filed a demand for IPRP II.

TIME LIMITS

• Times limits which must absolutely be monitored

ONLY TWO critical events

at 12 months: filing a international application under the PCT or not

at 30 months: enter into national phases or not, and

if yes, into which ones

EXCEPTIONALLY, two other critical events

at 18 months: let publish or not

at 22 months: request examination under Chapter II or not


– Time limits

– Choice of Offices and Administrations

– Language of filing– Designation of agent or common representative– Comparison between certain filing options– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and


CHOICE OF OFFICES AND ADMINISTRATIONS (1)

• Receiving Office (RO):

– the national Office of the contracting State of which the applicant (or one of the applicants) is a national or resident, or

– where applicable, an Office acting for a Contracting State of which the applicant (or one of the applicants) is a national or resident [regional Offices: EP – EA – ARIPO – OAPI], or

– the International Bureau of WIPO (RO/IB)

CHOICE OF OFFICES AND ADMINISTRATIONS (2)

• International Searching Authority (ISA) and

International Preliminary Examining Authority (IPEA)

– the competent ISA(s)/IPEA(s) is (are) specified by the RO

– more than one ISA/IPEA may be specified by the RO

• in making his choice, the applicant must take into account– the language accepted by the ISA/IPEA– that some IPEA(s) accept only IAs which have been searched

by certain ISAs


– Time limits– Choice of Offices and Administrations

– Language of filing

– Designation of agent or common representative– Comparison between certain filing options– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and


CHOICE OF LANGUAGE OF FILING

• Language of filing = Language used for description and claims– depending on the receiving Office (RO) used, the applicant

may have the choice between several languages of filinge.g.: RO/CH: English, French or German

RO/SD: EnglishRO/AP: English

– If IA not filed in a language accepted by RO• IA transmitted by non-competent RO to the receiving

Office of the International Bureau (RO/IB) which accepts any language

– Translation will be required if language of filing is not• a language of publication• a language of search


– Time limits– Choice of Offices and Administrations– Language of filing

– Designation of agent or common representative

– Comparison between certain filing options– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and


DESIGNATION OF AN AGENT ORA COMMON REPRESENTATIVE (1)

• The designation of an agent (who will act on behalf of the applicant(s)) is not mandatory under the PCT, however,

the use of the services of an experienced patent attorney is highly recommended

• Who can act as agent?

– any person who has the right to practice before the RO

– such person automatically has the right to practice before the IB, the ISA and the IPEA

DESIGNATION OF AN AGENT ORA COMMON REPRESENTATIVE (2)

• What is a common representative?

one of the applicants, who is entitled to file an IA, and who is appointed by all the other applicants

• Where neither a common agent nor a common representative has been appointed, the first named applicant in the request who is entitled to file an IA with the RO with which the IA was filed is automatically « deemed » to be the common representative


– Time limits– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative

– Comparison between certain filing options

– Fees– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and


COMPARISON of CERTAIN FILING OPTIONS FORTWO CO-APPLICANTSSD and US

LANGUAGE OF FILING

ISA IPEA AGENT CRPDEEMED

CRP

RO/AP ENG

AT AT/EP/SE

AP SD SDEP AT/EP/SE

SE AT/EP/SE

RO/SD ENG EP EP SD SD/US SD

RO/US ENG

EP EP/KR/US

US US/SD USKR KR/US

US KR/US

RO/IB

Any

(a translation may be required)

AT AT/EP/SE

AP, SD and/or US

SD or US

EP AT/EP/KR/SE/US

KR KR/US

SE AT/EP/SE

US KR/US


– Time limits– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative– Comparison between certain filing options

– Fees

– Preparation / Presentation of IA– Amendments, corrections, rectifications, changes and


FEES (1)

Overview

Filing

Transmittal Fee RO*

International Filing Fee IB

Search Fee ISA

Preliminary Examination

Preliminary Examination Fee IPEA*

Handling Fee IB

National

Phases

National Fee DO/EO*

National Fee DO/EO*

National Fee DO/EO*

* Office responsible for collecting the fees

FEES (2) Time limits for payment of fees to RO

• PCT filing fees* are due within one month from the date of receipt of the IA

* transmittal fee, international filing fee (if any, + suppl.) and search feeSafeguard: Rule 16bis (one additional month, but with charges)

• Applicable amount: amount payable on day of receipt of IA

• All PCT filing fees are payable to the RO

• Reductions for applicants from Sudan (under certain conditions):– no transmittal fee if IA filed with RO/IB– international filing fee: 90%– EPO search fee : 75%

• Refund of IFF and Search fee possible under certain conditions

FEES (3) Time limits for payment of fees to IPEA

• PCT examination fees* are due within either of the following time limits which expires later:– one month from the date of receipt of the request for examination, or– 22 months from the priority date* Examination fee and handling fee

Safeguard: Rule 58bis (one additional month, but with charges)

• Applicable amount: amount payable on day of receipt of request for examination

• All PCT examination fees are payable to the IPEA• Reductions for applicants from Sudan (under certain conditions):

– EPO examination fee: 75%– handling fee: 90%

• Refund of examination and handling fees possible under certain conditions

Comparison of PCT filing costs** for SD applicant,depending on RO and ISA chosen

Transmittal Fee (USD)

International Filing Fee (USD)

Supplement to IFF (USD)

Search Fee (USD)

RO/AP 50

1,338

or

133.80*

15

or

1.50*

AT: 314

EP: 2,665 or 666.25*

SE: 2,665RO/IB

None*

or

101

RO/SD23.50

(eq of 50 SDP)EP: 2,665 or 666.25*

* If reduction applies ** Amounts applicable on October 1, 2008


– Time limits– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative– Comparison between certain filing options– Fees

– Preparation / Presentation of IA

– Amendments, corrections, rectifications, changes and withdrawals

– International publication– Optional demand for preliminary examination– Entry into national phases

PREPARATION/PRESENTATION of a PCT APPLICATION

• Elements making up the IA

• Modes of filing

• Minimum requirements for obtaining an international filing date (IFD)

• Physical requirements

• Translation

• Accompanying documents

Elements Making Up The IA

• Request (Form PCT/RO/101)

• Description

• One or more claims

• Abstract

• and, where applicable

– drawings

– sequence listing part of description

– indications containing references to biological material

Different Modes Of Filing

• Entirely in paper form

• In paper/electronic mixed-mode*module PCT-EASY: all elements on paper and, in addition,

request form and abstract on a physical medium

• Entirely in electronic form*PCT-SAFE

• on line• on CD or DVD• on diskette

* Filing fees are reduced; conditions and availability to be checked with the RO

Minimum requirements for obtaining an international filing date (IFD)

• At least, one of the applicants must have the right to file with the RO*

• The IA must be in a language accepted by the RO*

• The IA must contain at least:– an indication that it is intended as an IA– a request which has the effect of making all possible designations– the name of the applicant– a description– a claim

* Safeguards: RO/IB is competent for nationals and residents of any PCT contracting State and accepts any language of filing

Physical requirements

• Some examples:

– format, margins, size of the characters– special conditions for the drawings

• Recommendations:

– physical requirements to be respected• in one go, preferably on filing • in order to avoid the filing of corrections later on

– international publication of good quality, easily legible in patent documents databases

Translation

• Where the IA is filed in a language which is not accepted by the ISA that is to carry out the international search, the applicant is required:

– to furnish to the RO

– within one month* from the date of receipt of the IA

– a translation of the IA into a language which is both:

• a language accepted by the ISA that is to carry out the search, and

• a language of publication

* Safeguard: extension of time limit possible (with late furnishing fee)

Accompanying documents

• Priority Document:copy of previous application whose priority is claimed in the IA

and which is certified by the Officewith which that application was filed

• Power of attorneydocument signed by the applicant authorizing his agent to act on his behalf

• Paymentmodes and particulars of payment to be checked directly with the RO

All these documents/papers should preferably be filed at the same time as the IA;

however, they may also be submitted to the RO and/or IB, under certain conditions,

after filing.


– Time limits– Choice of Offices and Administrations– Language of filing– Designation of agent or common representative– Comparison between certain filing options– Fees– Preparation / Presentation of IA

– Amendments, corrections, rectifications, changes and withdrawals

– International publication– Optional demand for preliminary examination– Entry into national phases

AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (1)

• Amendments of the claims under Article 19

– one opportunity to amend the claims only after receipt of the ISR and written opinion of the ISA (WOSA)

– must be filed within two months from the date of transmittal of the ISR and WOSA

– filed directly with the IB

– generally used to better define provisional protection, where available

– published as part of the international application at 18 months, in addition to the claims as originally filed


• Amendment of the international application under Article 34

– all parts of the IA may be amended in connection with the international preliminary examination under Chapter II

– should be filed together with the demand for international preliminary examination so that examination will be based on the application as amended


• Amendments upon entry into the national phase

– all parts of the international application may be amended

– time limit is normally at least one month from the date of fulfillment of the requirements for entry into the national phase

– any later time limit under the national law apply

– any claims fee due for the national phase will be calculated on the basis of the number of claims valid at the time of entry into the national phase

AMENDMENTS, CORRECTIONS, RECTIFICATIONS,CHANGES AND WITHDRAWALS (4)

• Mains types of defects:

– defects which prevent the according of the international filing date (IFD)

e.g., no applicant from a PCT contracting State

– defects which, if corrected, will result in a change of the IFD

e.g., later submitted sheets

– defects which cannot affect the IFD

• but require a correction by the applicant

e.g., fees not (totally) paid

• do not require a correction by the applicant

e.g., ex officio correction by the RO


• Incorporation by reference of missing elements or missing parts*• Correction and addition of priority claims• Restoration of the right of priority*• Rectification of obvious mistakes• Recording of changes• Withdrawals

Declarations of incompatibility with the national law (reservations) were made by a number of ROs and DOs.

See WIPO website at www.wipo.int/PCT/eng/texts/reservations



withdrawals

– International publication

– Optional demand for preliminary examination– Entry into national phases

INTERNATIONAL PUBLICATION (1)

• Promptly after 18 months from priority date, on the Internet

• Publication languages: Arabic, Chinese, English, French, German, Japanese, Russian or Spanish

(01.01.2009: + Korean and Portuguese)

• Contents: front page with bibliographic data and abstractdescription, claims and drawings, if anyinternational search report

+ Gazette: lists each of the published IAscontains: bibliographic data, abstract and drawing, if any

INTERNATIONAL PUBLICATION (2)

• Frequency: every Thursdayif Thursday is not open for official business: possibly, but not always, the preceding Wednesday

• Technical preparations:Normally completed 15 calendar days before the actual publication date

• Preventing publication: by withdrawing the IA

• Postponing publication: by withdrawing the (earliest) priority date

• Early publication: upon express request by applicant (subject to a special fee if ISR not yet available)



withdrawals– International publication

– Optional demand for preliminary examination

– Entry into national phases

INTERNATIONAL PRELIMINARY EXAMINATION (1)

• Option only: where the applicant wishes to continue with the International Preliminary Examining Authority (IPEA) the substantive examination procedure, beyond the examination already done by the ISA

• Purpose: provides a (second) preliminary non-binding opinion on– novelty (not anticipated)– inventive step (not obvious)– industrial applicability

• Time limit: 22 months from the priority date or 3 months from the date of transmission of the ISR WOSA, whichever time limit expires later

• Where? directly with the competent IPEA

INTERNATIONAL PRELIMINARY EXAMINATION (2)

• Fees due: preliminary examination feehandling fee

Both fees are collected by IPEA

• Elements which constitute a Demand for preliminary examination:Demand (Form PCT/IPEA/401)If any, amendments to the international application

• IPRP (Chapter II) established at whichever of the following time limits which expires later:

• 28 months from the priority date• 6 months from the start date of examination or translation



withdrawals– International publication– Optional demand for preliminary examination

– Entry into national phases

ENTRY INTO THE NATIONAL PHASE (1)

• Decisions to be taken by the applicant

– Whether proceed with or drop the IA ?

– When ?• At the end of 30 months (when applicable, 31 months or more)

– Under Chapter I ?– Under Chapter II ?

• Early entry ?

– Where ?

• Which national Offices ?• Which regional Offices ?

ENTRY INTO THE NATIONAL PHASE (2)

• Acts to be performed by applicant– express request to enter into the national phase– if any, file a translation in the official language of the national Office– pay the national fees

• A few tips:– time limits for entering national phase apply irrespective of delays in the

international phase– make necessary indications that applicant is entering the national phase,

i.e., that it is not a direct filing– translation of the IA must be correct and complete (no subject matter may

be added and /or deleted)– pay the required fee (amount may be different from that applicable to

direct national filing)

Thank you very much for your attention.

Jean-Luc Baron

Head, PCT Offices Services Section

Tel.: +41 22 338 93 52

Fax: +41 22 338 71 60

Email: [email protected]

Documents

THE PATENT COOPERATION TREATY (PCT) Practical Considerations in Managing PCT Applications Geneva, November 26, 2008