Transcript PCT SYSTEM - Markpatent

WELCOME TO ALL PARTICIPANTS BY
A.T.PATRE.
ASSTT. CONTROLLER OF PATENTS &
DESIGNS
PATENT OFFICE,
MUMBAI.
INTRODUCTION
TO THE PATENT
COOPERATION
TREATY (PCT)
IMPORTANT TO KNOW
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PATENT A TERRITORIAL RIGHT: Patent right is
enforceable only in the country of issue.
DESIGNATION: Selection of the Country in PCT request
form where the applicant want to obtain the Patent
ELECTION: Selection of the Country out of designated
countries in PCT prelim. examn. form request form where
the applicant want to obtain the Patent
SEARCH: An important part of the Patent application
examn. to check whether the invention is novel or not.
PRIORITY DATE: the date of disclosure of the invetion,
the protection for invention starts from P.D.
INT. FILING DATE: the date of filing an international
application & it is the priority date for the invention & also
the date of Patent for the designated countries
ROUTES TO FILE A PATENT
APPLICATION
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TRADITIONAL ROUTE
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THE PATENT COOPERATION TREATY
ROUTE
TRADITIONAL
PATENT SYSTEMS
TRADITIONAL PATENT SYSTEM
REQUIRES
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FOR APPLICANTS: 
Expenses for
-translations
-patent attorneys
-payment of fees
for each Patent Office
all at a time
Often without knowing
whether he is likely to
obtain a patent
FOR EACH PATENT
OFFICE:
-formal examination
-search
-substantive
examination
THE PCT
(the Patent Cooperation treaty)
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Adopted in 1970 in Washington
Entered into force on 24.01.1978
Became operational on 1.6.78 with 18
contracting states
As on today total 128 states are the
member
India joined PCT on 07.12.98
THE PCT IS AN AGREEMENT FOR
INTERNATIONAL COOPERATION IN THE
FIELD OF PATENTS.
IT IS A TREATY FOR RATIONALISATIONS
AND COOPERATION WITH REGARD TO THE
FILING, SEARCHING & EXAMINATION OF
PATENT APPLICATIONS AND THE
DISSEMINATION OF THE TECHNICAL
INFORMATION CONTAINED THEREIN.
The PCT is administered by IB, WIPO,
Geneva, Switzerland
PCT ESTABLISHES
an international system which enables:
 Filing single application (the
international application
 With a single patent office (the
receiving office)
 In one language having effect in
each contracting state (the
designated office)
 One formal EXAMINATION ( by
the receiving office )
 One search ( by the international
searching authority )
 One international publication (by
the IB of WIPO )
 One optional preliminary
EXAMINATION ( by the
international preliminary
LIMITATION OF THE PCT
SYSTEM
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PROVIDES PROTECTION FOR
INVENTIONS BY APPLYING FOR
PATENTS
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DESIGN & TRADEMARK
PROTECTION CANNOT BE
OBTAINED VIA PCT
PCT SYSTEM CONSISTS OF:
1. AN INTERNATIONAL
PHASE, COMPRISING:
(30/31 MONTHS LONG)
* FILING OF INTERNATIONAL
APPLICATION
* * INTERNATIONAL SEARCH
*** INTERNATIONAL PUBLICATION
**** INTERNATIONAL
PRELIMINARY EXAMINATION
(optional)
2. A NATIONAL / REGIONAL
PHASE,BEFORE:
* DESIGNATED OFFICE
** ELECTED OFFICE.
IN PCT SYSTEM
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NO PATENT IS GRANTED DURING THE
INTERNATIONAL PHASE.
THE PATENTS ARE GRANTED IN THE
NATIONAL PHASE BY THE NATIONAL
PATENT OFFICES WHICH IS ENFORCEABLE
IN THAT COUNTRY ONLY .
THERE IS NO PCT PATENT
PCT TIMELINE-A(before 1.1.04)
30/31
ENTRY
IN N.P.Ch I
INT. PUBLICATION
MONTHS
12
16
FILE INTERNATIONAL INT. SEARCH
FILE
APPLICATION
APPLICATION
REPORT
LOCALLY
NON PCT APPLICATION
18
NO REQUEST
FOR EXAMN
19
FILING REQUEST
FOR PRELIM
EXAMN.
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PRELIM
EXAMN
REPORT
30/31
ENTRY
IN
NATIONAL PHASE
Ch II
PCT TIMELINE-B(before 1.1.04)
30/31
ENTRY
IN N.P.Ch I
INT. PUBLICATION
MONTHS
FILE
INTERNATIONAL
APPLICATION
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INTERNATIONAL
SEARCH REPORT
18
NO REQUEST
FOR EXAMN
19
FILING REQUEST
FOR PRELIM
EXAMN.
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PRELIM
EXAMN
REPORT
30/31
ENTRY
IN
NATIONAL PHASE
Ch II
EISPE system
0-12 mths
IA filed
16
ISR
ISA opinion on
patentability
criteria
Art. 19 amdts
Int’l publication: IA + ISR
(+ Art. 19 amendments)
18
Chapter II
Chapter I
later of:
WO of ISA+3
or 22*
Demand
No demand filed
(+ Art. 34
arguments,
amendments)
1st written IPE opinion =
ISA opinion (unless IPEA
has declared otherwise)
IPE procedure
Applicant comments
on ISA opinion to IB
(if no IPER
established)
(informal
procedure)
International preliminary report
on patentability by ISA (IPRP)
(Chapter I of the PCT)
30
International preliminary report
on patentability by IPEA (IPRP)
(Chapter II of the PCT) (= IPER)
IPRP (Chapter I)
(+ any comments)
to DOs
IPRP (Chapter I)
(+ any comments)
publicly available
IPRP (Chapter II)
publicly available
(on request of EO)
National phase entry
National phase entry
IPRP (Chapter II)
to EOs
* must in practice file demand by 19 months for Article 22 transitional reservation countries
COMPETENT RECEIVING OFFICE
(Article 10, Rule 19)
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THE PATENT OFFICE
CALCUTTA & ITS
BRANCH
OFFICES AT MUMBAI,
CHENNAI,NEW DELHI
(RO/IN)
&
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INTERNATIONAL
BUREAU
(RO/IB)
LANGUAGE OF FILING
(Rule 12)
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RO/IN--ENGLISH
OR
HINDI
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RO/IB--ANY
LANGUAG
ELEMENTS TO ACCOMPANY THE
INTERNATIONAL APPLICATION
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REQUST(PCT/RO/101)--Article 4
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DESCRIPTION --Article 5
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ONE OR MORE CLAIMS -- Article 6
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ABSTRACT --Rule 8
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DRAWING (where applicable)
--Article 7
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FEES --Rules 14,15&16
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PA/GPA(where applicable) --Rule 90
(not necessary as per pct amendment 1.1.04)
NO.OF COPIES REQUIRED
[Rule 11.1(b)]
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RO/IN-* FOUR COPIES OF EACH OF
REQUEST,DESCRIPTION,
CLAIMS,DRAWINGS &
ABSTRACT IF FILED AT
POB,Mumbai, Chennai,NewDelhi
* THREE COPIES OF EACH
DOCUMENT AS MENTIONED
ABOVE IF FILED IN P.O. ,
CALCUTTA
RO/IB--ONE
THE REQUEST (Article 4, Rule
3)
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Printed request form (PCT/RO/101)
* may be obtained free of charge:
from RO/IN
or
from RO/IB
* available on internet (www.wipo.int)
FROM PCT EASY SOFTWARE
DOWNLOADED FREE OF COFT FROM
www.wipo.int site
Computer- generated request
* layout and contents must be same as the
printed form
* slight adjustments are permitted
* any text printed in italics may be omitted
FUNCTION OF RECEIVING OFFICE
–
RECEIVING
INTERNATIONAL APPLICATION FOR
PATENT UNDER PCT
ACCORDING INT. FILING NO. & DATE
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PROCESSING/ CHECKING
OF ESSENTIAL REQUIREMENTS
WHICH AFFECTS THE I.F.D.
AND OF OTHER FORMAL & PHYSICAL
REQUIREMENT
of SAID APPLICATION
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--TRANSMITTING
* RECORD COPY TO IB
**SEARCH COPY TO ISA,
(CHOOSEN BY APPLICANT )
***APPLICABLE FEES TO
APPROPRIATE AUTHORITY
R.O. DOES NOT PERFORM
SUBSTANTIVE EXAMINATION
CONDITIONS FOR ACCORDING
INTERNATIONAL FILING DATE:
ARTICLE 11
i) Applicant –resident or national of India
ii) Application –in English or Hindi
iii) Elements to accompany the application,
a) a request
b) applicant’s name & address
c) description
d) one or more claim(s)
e) Designation of atleast one PCT
contracting state(designation to all pct contracting
states are automatic now as per pct amendment)
Physical requirements of
international application
(Rule 11)
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A4 size paper for all sheet
Line spacing: 1.5 cms for pages of
text in description, claim & abstract
Minimum & maximum margins for
the sheets and drawing as explained
in the next slide
Drawings: should not contain text
matter in the drawings, so as to
avoid problem of translation for
national phase
Margin requirements for text
(Rule 11)
Margin requirements for
drawing
NATIONAL SECURITY MATTERS
(Rule 22 & Section 330 of A.I.under
PCT)
AT THE PATENT OFFICE,
CALCUTTA ALL INTERNATIONAL
APPLICATION FOR PATENT ARE
REFERRED TO THE EXPERT
COMMITTEE FOR REVIEW OF
NATIONAL SECURITY MATTERS,
AND IF NATIONAL SECURITY
CLEARANCE IS REFUSED OR IS
NOT OBTAINED THE SAME IS
NOTIFIED TO THE APPLICANT & IB
OF WIPO
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PCT FEES
TO RECEIVING OFFICE (THE PATENT OFFICE ,CALCUTTA &
ITS BRANCH OFFICES AT NEW DELHI, MUMBAI,CHENNAI)
1.
2.
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6.
7.
Transmittal fee
: INR 2,000--for natural person
INR 8,000--for legal entity
International filing fees : Basic & designation fees combined to form international
(30sheets)
:filing fees - USD 1102 .All states designated.
Supplement per sheet
excess of 30
: USD 12 *
Search fee
: ISA/AT -- USD 262
ISA/EP -- USD 1877*
ISA/AU -- USD 942
ISA/CN -- USD 181
ISA/US -- USD 1000
ISA/SE -- USD 1877
Fee for preparing of certified copy
of priority document and transmission
the same to IB
: INR 1,000--for natural person
INR 4,000--for legal entity
PCT EASY reduction
--USD 79
* 75% REDUCTION IN FEES FOR NATURAL PERSON
FROM INDIA
{ Rule 14,15,16& 96 }
INTERNATIONAL
PRELIMINARY EXAMINATION
FEES
* 75% FEE REDUCTION FOR NATURAL PERSON
IPEA
FEES OF IPEA
HANDLING FEE
AT
EUR 200
EUR 129
AU
AUD 550
AUD 218
CN
CNY 1,500
CNY eq CHF 200
EP
EUR 1,530*
EUR 129*
SE
SEK 5,000
SEK 1,160
US
USD 600
USD 157
MODE OF PAYMENT IN USD
TO FECILITATE THE PAYMENT IN
USD, AN ACCOUNT HAS BEEN OPENED
BY RO/IN WITH SBI, NEW YORK
BRANCH ASSIGNING A/C NO. 2111250821-001
 INDIAN APPLICANT, FILING
INTERNATIONAL APPLICATION FOR
PATENT UNDER PCT, TO REMIT THE
CONSOLIDATED AMOUNT IN USD BY
D.D. PAYBLE TO THE CONTROLLER
OF PATENTS AT SBI, NEW YORK
BRANCH FOR PAYMENT TOWARDS
BASIC FEE, DESIGNATION FEE &
SEARCH FEE
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COMPETENT INTERNATIONAL
SEARCHING & EXAMINING
AUTHORITIES (ISAs)
(Article 16, Rule 35)
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AUSTRIAN PATENT OFFICE (AT)
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AUSTRALIAN PATENT OFFICE(AU)
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EUROPEAN PATENT OFFICE ( EP)
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CHINESE INTELLECTUAL
PROPERTY OFFICE (CN)
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UNITED STATES PATENT&
TRADEMARK OFFICE (US)
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SWEDISH PATENT OFFICE (SE)
COMPETENT INTERNATIONAL
PRELIMINARY EXAMINING
AUTHORITIES (IPEAs)
(Article 32, Rule 59)
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AUSTRIAN PATENT OFFICE (AT)
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AUSTRALIAN PATENT OFFICE (AU)
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EUROPEAN PATENT OFFICE ( EP)
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CHINESE INTELLECTUAL
PROPERTY OFFICE (CN)
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UNITED STATES PATENT &
TRADEMARK OFFICE (US)
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SWEDISH PATENT OFFICE (SE)
ENTRY INTO NATIONAL
PHASE
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Entry in National Phase as later as 31 months from priority
date by filing:
A request on form 1 or on a plain paper containing details
of international application.
Pay National fees (for India 1000/4000.)
Proof of right to file if applicant is not inventor.
Information regarding foreign filing form 3.
Declaration as to inventorship (form-5).
Copy of PCT pamphlet with international application &
search report.
Copies of any amendments, preliminary examination
report.
PA/GPA where applicable (Note :- The grant of Patent is
governed National law) designated country.
STEPS FOR GRANT OF A
PATENT THROUGH PCT ROUTE
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FILING OF AN INTERNATIONAL APPLICATION
FORMAL EXAMN. BY R.O.
INT. SEARCH BY I.S.A.
INT. PUBLICATION BY WIPO
PRELIM. EXAMN. BY I.P.E.A.(OPTIONAL)
ENTRY INTO NATIONAL PHASE IN DESIGNATED
COUNTRY
EXAMN. BY DESIGNATED COUNTRY OF PATENT
APPLICATION AS PER THEIR OWN PATENT LAW
GRANT OF THE PATENT BY DESIGNATED
COUNTRY
Denotes international phase
Denotes National phase
BENEFITS OF PCT SYSTEM.
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Fast processing of
applications for grant of
Patent during National
Phase.
Saving of time and money
if search report by ISA is
adverse by abandoning the
application.
Applicant gets 30/31
months for entry into
National Phase. This time
may be used to explore
market values of his
invention.
BENEFITS OF PCT SYSTEM.
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The application for the Patent in
the designated office is deemed to
have been filed on the date of
International filing i.e 19 or 30/31
months prior to entry to N.P.
Language of filing does not affect
the prority date if filed in the
language accepted by R.O.
Some countries provide fees
reductions in fees in National Phase
when comes through PCT.
Priority documents need not to be
filed in N.P by applicant the same
is sent by the I.B., WIPO to the
National Offices.
No need to draft different
applications for different
designated offices. International
application serves for all.
THANKS