Course on the International Patent Filing System:

I. Boutillon – November 2012 - CEIPI 1

Course on the International Patent Filing System:

The Patent Cooperation Treaty (PCT)-- November 2012 --

By: Isabelle BOUTILLONAdjunct Professor, CEIPI

Joint Degree Master Programme in Intellectual Property Law

SS. Cyril and Methodius UniversityIustinianus Primus Law Faculty

andUniversity of Strasbourg (UdS)

Centre for International Intellectual Property Studies (CEIPI)


Document establishedpartly on the basis of articles published by the author in

« JurisClasseur, LexisNexis, France » and partly on the basis of documentation published bythe World Intellectual Property Organization (WIPO).


Table of contents I.- Introduction

II.- A few important dates

III.- The PCT: a treaty, a system and a framework

IV.- General overview of the procedure

V.- Procedure step by stepV.-A- Filing V.-B- Search and examinationV.-C- PublicationV.-D- Entry into national phaseV.-E- Access to the file

VI.- Conclusion


I.- Introduction: about the « PCT »

The « PCT » is an international multilateral treaty

The « PCT » as a treaty is the foundation for the « PCT system »


I.- Introduction: the PCT system …

is a patent FILING systemsimplifying and streamlining the patent procedure

for obtaining patent protection in multiple countries

for applicants worldwide

is NOT a patent GRANTING systemthere are no « PCT patents »

or « international patents »

is THE ONLY INTERNATIONAL patent filing systemexisting today

[PCT Preamble]


I.- Introduction





VI.- Conclusion



Conclusion of the Treaty: June 1970

Entry into force: January 1978

Start of operations: June 1, 197818 Contracting Statessame day as the European Patent Convention (EPC)

Today:146 Contracting StatesMore than 100 offices and International Authorities~180,000 new PCT applications filed per year worldwide


The Former Yugoslav Republic of Macedonia (MK)

is a PCT Contracting State since August 10, 1995

is a European Patent Convention (EPC) Contracting State since January 1, 2009

is therefore accessible in a PCT application filed by any PCT applicant worldwide

either for a national MK patent or a EP patent designating MK


I.- Introduction





VI.- Conclusion



International TREATY in the field of patents

"Special agreement" under Article 19 of the Paris Convention

Administered by WIPO

The PCT Contracting States constitute a UNION"International Patent Cooperation Union"

The ASSEMBLY of the Union consists of the Contracting States

[PCT Art. 1]

[PCT Art. 1]

[PCT Art. 53]


About … Treaty, Cooperation and Patents

TreatyContracting States- which must be countries party to Paris Convention

Cooperation between- national / régional offices- International Authorities- International Bureau of WIPO

Patents- field of patents (protection of inventions)- « patentability » ?

[PCT Art. 1]

[PCT Art. 1]

[PCT Art. 1, 2]


Existing national / regional Offices

which act also under the PCT as: receiving Offices (RO)International Searching Authorities (ISA) International Preliminary Examining Authorities (IPEA)designated Offices (DO)

International Bureau of WIPO (IB)

PCT Offices and International Authorities

[PCT Art. 2, 10, 16, 22, 32]

[PCT Art. 55]


receiving Office

International Searching Authority

International Preliminary Examining Authority

designated Officeelected Office

Role of offices and authorities in the PCT procedure

PCT system administration in generalinternational publicationaccess to the files

competent as any national / regional receiving Office,- but in all cases - and also as a safeguard

RO

ISA

IPEA

DO/EO

filing

International search and (unilateral) examination

examination (with possible intervention by applicant)

national phase

IB

RO/IB

International Bureau of WIPO

International Bureau acting as « universal » and « safeguard »

receiving Office


The PCT, part of the « Patent space »

« Patent space » consist of:

more than 10 instruments- international, such as Paris Convention,

PCT, etc. - regional, such as EPC- bilateral- technical

multiples national / regional legislations[PCT Art. 27]

[PCT Art. 1, 44, 45]


EPC

EAPC

OAPI

ARIPO

CH - LITREATY

TRIPS Agreement

PLT

Bilateral Agreements with EPO

Budapest Treaty

Strasbourg Arrangement National laws

PCT

Paris Convention

« Patents Space »


The PCT Texts

8 main types of textarticulated in 5 hierarchical levels

Main legal texts expressly provided for by the Treaty:Regulations, Gazette, Agreements, Administrative Instructions, Fees Guidelines

Other essential texts (legal and/or technical) developed within the framework of the main texts, to assist:

offices, authorities and applicants, patent agents, attorneys

[PCT Art. 58, 55, 16, 32, 58.4; Reg R. 15, 16, 57]


The PCT Texts structure

RegulationsAgreementsGazette

Guidelines on fees

Administrative Instructions

Guidelines for international search

and examinationGuidelines for

receiving Offices

PCT Applicant’s Guide

PCT Newsletter

PCT Treaty


The main two PCT Texts

The Treatyconcluded in June 1970modified in September 1979, February 1984 and October 2001

Current version is in force since October 3, 2001

Regulationsadopted in June 1970modified 34 times since

Current version is in force since July 1, 2012Next version will be in force as from January 1, 2013


I.- Introduction





VI.- Conclusion


[months]

First filing of the patent

application at the national or

regional stage *

Subsequent filings of national or

regional * applications

claiming the priority of the first filing

In the framework of regional arrangements(ARIPO, EAPC, EPC, OAPI)

**

National or regional * granting

procedures of various length, complexity and

cost*

0 12

IV.- General overview of the procedure: … recalling the traditional patent system under the Paris Convention


[months]

National phases before

designated offices

International phase

PCT Filing with priority claim

First national or regional filing

12 0 30

The PCT system


I.- Introduction





VI.- Conclusion


National phases

(months) priori

ty

181612 0 30

1st step---

PCT filing

2nd step---

international search

and examinati

on (unilateral

)

3rd step---

international

publication

5th step - optional step -

--- international

preliminary examination (continuation of

examination with possible intervention

by applicant)

V.- Procedure step-by-step: the international phase in 5 steps

1922

4th step - optional step

- ---

international supplementary

search

Chapters I and II

of Treaty

Chapter Iof Treaty


Only TWO critical events:

at 12 months : file a PCT application ?

at 30 months : national phases ? And if so, where ?

Exceptionally:

at 18 months : international publication ?

at 19 months : international supplementary search ?

at 22 months : request for international preliminary

examination (under PCT Chapter II) ?

Main time limits to monitor


I.- Introduction





VI.- Conclusion


V.-A- Filing of the international application

The applicantnatural personlegal entity

Where to file: the receiving Officenational Officeregional OfficeInternational Bureau acting as receiving office

[PCT Art. 9; Reg R. 18; Art. 27.3 ]

[PCT Art. 10; Reg R. 19]


The applicant is the national of a PCT Contracting State or has his residence in a PCT Contracting State

The application is filed with a competent receiving Office

The application (i.e., description, claims) is filed in an accepted language

The application contains the minimum elements :indication « PCT »the designation of at least one PCT Statename of applicantdescriptionat least one claim

Requirements for an international filing date [PCT Art. 11.1]


Designations of PCT Contracting States

Global and automaticfiling of request = all designations

available on the date of filing

Choice of types of protection : at national phase stage

national / regional patentpatent / other title

No designation fee required

[PCT Art. 4; Reg R. 4.9, 49bis]

[PCT Art. 4.2; Reg R. 15]

[PCT Art. 4, 11.1(iii)(b); Reg R. 4.9]


Still about the filing

Important elements not required upon filing of the application, which can be submitted subsequently :

feestranslationsignature, power of attorneyabstract

National security requirements to be complied with by applicant before filing

at the International Bureau (as universal and safeguard office for all applicants) or at the European Patent Office (as

regional office)

[PCT Art. 14]

[PCT Reg R. 19.1, 19.4]


Effects of the international application

International filing = regular national filing

International filing date= effective filing date in each designated

State = starting point of the international phase

= potential priority date (Paris Convention)

[PCT Art. 11.4, Paris Conv.]

[PCT Art. 11.3, 11.4]


[months]

[months]

International phase

National phases before

designated Offices

International phase

PCT = filing under priority

PCT = first filing or filing outside of priority period

First national or regional filing

12 0

0 30

30

PCT filing with priority claim or without[PCT Art. 8; Reg R.4.10]


« Priority date »

Priority date is:

[if one priority claimed] = the filing date of the application whose priority is claimed

[if more than one priority is claimed] = filing date of the earliest application whose priority is claimed

[if no priority is claimed] = PCT filing date

Used for the calculation of important time limits

[PCT Art. 2(xi)]


I.- Introduction





VI.- Conclusion


Entry into

national phases

1816120 30

Written

opinion

International Search Report

Supplementary International

Search Report

28

International Preliminary Report

on Patentability

IPRP

International

publication

PCT Filing

Priority

V.-B- Search and examination: an overall view


International Searching Authorities (ISA)

International Preliminary Examining Authorities (IPEA)

International agreements between each ISA/IPEA and the International Bureau

PCT Search and Examination Guidelines

General framework for search and examination

[PCT Art. 16, 32]


18 ISAs/IPEAs appointed by PCT Union Assemblyof which 15 are in operation

National Offices of the following 13 PCT States: AT Austria, AU Australia, BR Brazil, CA Canada, CN China, ES Spain, FI Finland, IL Israel, JP Japan, KR Republic of Korea, RU Russian Federation, SE Sweden and US

and the following 2 Offices: EPO and Nordic Institute

[The national Offices of EG Egypt, IN India and CL Chile have not yet announced when they will be operational]

Each receiving Office specifies the Authority or Authorities it wishes to make available to its applicants

If several Authorities are competent for a given application, the applicant chooses

International Authorities (ISAs/IPEAs) available

[PCT Art. 16, 32;Reg R. 35, 59]


1612 0 30

International Search

Report (ISR)

modifications of the claims

2 months

18

Written opinion by ISA

International search and written opinion by International Searching Authority (ISA)


Purpose of searchrelevant state of the artrelevant date (PCT filing date)

Documentation to be used by ISAminimum PCT documentationother documentation held by ISA

International Search Report (ISR)citations of relevant documentsindication according to the International Patent

Classification (IPC)fields on which the search was carried out

International search



[PCT Reg R. 34]


Characteristicspreliminary, non bindingnovelty ?inventive step ?industrial application ?

First step of the examination procedureobligatory and unilateralon the basis of the PCT application as filed

Relevant date = priority date

Written Opinion by the ISA

[PCT Art. 34; Reg R. 43bis]

[PCT Reg R. 43bis]


Amend the claims ?

Request international preliminary examination (under Chapter II of the Treaty) ?

If preliminary examination is not requested,conversion of the written opinion into the International Preliminary Report on Patentability under Chapter I of the Treaty (« IPRP Ch. I »)

Applicant’s reply, reaction, next step


[PCT Art. 31]

[PCT Reg R. 44bis]


(months)

30

Written

opinion by ISA

International Preliminary Report on Patentability

(IPRP ch.I)

16 18Preliminary examinationrequested

?

22

no

If international preliminary examination is not requested


30

International Preliminary Report on

Patentability (IPRP ch.II)

Demand for international preliminary examination

28

(2nd) Written

opinion by IPEA

(1rst) Writtenopinion by IPEA

Amendments or arguments (in

response to written opinion by ISA)

Amendments or

arguments (in response

to (2nd) written

opinion by IPEA)

[preferably with]

Preliminaryexamination

requested? 22

yes

Written

opinion by ISA

If international preliminary examination is requested


Purpose of examinationpreliminary non binding opinionnovelty ?inventive step ?industrial application ?

Examination procedurenot mandatory (upon express request from applicant)not unilateral (applicant’s intervention expected)on the basis of application as filed / modified

and /or with arguments

Relevant date = priority date

International preliminary examination

[PCT Art. 31, 33]

[PCT Art. 31; Reg R. 53, 54]

[PCT Reg R. 64]


Amend the application (description, claims, drawings)

Present arguments

Ask for an interview with examiner

Do not reply

Wait for IPRP Ch. II to decide whether to enter into national phase and how

Applicant’s reply, reaction, next step



At the end of the international phase

« IPRP Ch. I » or « IPRP Ch. II » = closing of the PCT search and examination procedure

there are no appeals possible during the international phase

IPRP = basis for the national examination

even if it does not bind the designated Offices

[PCT Art. 35; Reg R. 44bis]


I.- Introduction





VI.- Conclusion


Time limit : shortly after the expiration of 18 months from the priority date

Contentsinternational application per se and the « Gazette » (now referred to as « Official Notifications »)

Language(s) of publication

Effects of publicationstate of the artprovisional protection

V.-C- Publication


[PCT Art. 55.4); Reg R. 48, 86]

[PCT Reg R. 48]

[PCT Art. 21, 29; Reg R. 33, 34]


Electronic form of publication

Communication to designated Offices

Prevent publication ?

Postpone publication ?

Advance publication ?

Cases where there will be no publication

A few other questions relating to international publication

[PCT Reg R. 48]


[PCT Reg R. 90bis.1]

[PCT Reg R. 90bis.3]

[PCT Art. 21.2; Reg R. 48]

[PCT A. 11, 14, 24, 64; Reg R. 29, 90bis]


I.- Introduction





VI.- Conclusion


Applicant’s decision initiativewhere (designated office(s))how

General time limit : 30 months from priority date31 or morereinstatement of rights

Early entry

V.-D- Entry into national phase

[PCT Art. 22, 39; Reg R. 49, 76]

[PCT Art. 22, 23, 39, 40]

[PCT Reg R. 49.6]

[PCT Art. 23, 40]


Granted patents

No national phase Rejection

or abandonme

nt

National phase

National phasesInternational phase12 0 3130


Applicant must do the following: make an express request for entry into national phasefile a translation of the applicationpay the national fees

The International Bureau transmits to each designated Office, copies of the following documents on behalf of the applicant:

PCT application as publishedpriority documentInternational Search ReportInternational Preliminary Report on

Patentability

Acts which constitute entry into national phase

[PCT Art. 22, 39]

[PCT Art. 20; Reg R. 17.2, 70]


Furnishing of proofs of allegations / declarationsnames, indications, documents

Requirement for mandatory representationappointment of a local agent or attorney

Substantive conditions of patentabilitydefinition of prior artevidence

National requirements remaining to be complied with upon entry into national phase

[PCT Art. 27.2, 27.3, 27.4; Reg R.51bis]

[PCT Art. 27.7]

[PCT Art. 27.5, 27.6]


I.- Introduction





VI.- Conclusion


Who has accessthe applicantany person authorized by the applicantthird parties

To which documents contained in the file of the international application

At which Office or AuthorityInternational Bureaudesignated / elected Officesothers ?

As of when

V.-E- Access to the file of the international application

[PCT Art. 30, 38;Reg R. 17.2, 94]


[months]

As from 30 months, ACCESS to

certain items relating to examination: ISA written

opinion,IPRP (Ch.I or Ch.II)

12 0 18

As from international publication, ACCESS to all items in the file

other than those relating to examination (Ch. I or

Ch. II)

Before international publication:NO ACCESS

30

National phases: ACCESS according to

national law

IB

IB

IB

DO EO

Access to the file of the international application by third parties


I.- Introduction





VI.- Conclusion


VI.- Conclusion (1)

From the viewpoint of the main beneficiaries of the system: the applicant and his agent

advantagessingle proceduregreat flexibilitypredictability of the international

phasemain steps and main time

limits

guaranteesminimum requirementslast minute filingreasonable time limitsnumerous safeguards


VI.- Conclusion (2)

From the viewpoint of the institutional beneficiaries of the system: the Contracting States, their offices and authorities

predictability of the international phasemain steps and main time limits

sharing of work = reduction of unnecessary duplication in the national

phase

assistance for technical cooperation


VI.- Conclusion (3)

The only existing international patent filing system

Clear and simple principles

Simple to use with numerous safeguards for applicants

More complex mechanic if various options are used

Major articulation in the international patent system including many treaties and conventions


VI.- Conclusion (4)

Constant evolution requiring involvement ofContracting StatesIP officesWIPOall users (applicants, agents, other users)

Potential for yet future developments


The end.

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