Transcript Document

Introduction to the
Patent Cooperation Treaty
Charles Pearson
Office of PCT Legal Administration
United States Patent and Trademark Office
November 2014
Patent Cooperation Treaty
1
Objectives
• To understand the structure and function of the
Patent Cooperation Treaty (PCT)
– International and National Stages
• To understand duties and obligations under the
Treaty
–
–
–
–
–
–
IB (International Bureau)
RO (receiving Office)
ISA (International Searching Authority)
SISA (Supplementary International Searching Authority)
IPEA (International Preliminary Examining Authority)
DO/EO (Designated Office/Elected Office)
November 2014
Patent Cooperation Treaty
2
The Patent Cooperation Treaty
• A United Nations Treaty
– signed June 1970
– became operational June 1978
– administered by the International Bureau
(IB)
• of the World Intellectual Property Organization
(WIPO) in Geneva, Switzerland
November 2014
Patent Cooperation Treaty
3
International Patent?
• An international application (IA) is filed
under the PCT but…
– there is no “international patent”
– the PCT functions as a patent application filing
system
– the IA must still be prosecuted
• in each national or regional office where patent
protection is desired
November 2014
Patent Cooperation Treaty
4
PCT Benefits for Applicants
• Simplifies the process of filing foreign applications
– one set of formality requirements
– establishes a filing date in all PCT Contracting States
• Postpones costs
– for filing in the national/regional offices
– translation fees, filing fees, attorney fees
• Provides
– an early indication of prior art and
– a written opinion as to the novelty, inventive step and
industrial applicability of the claimed invention
• Gives extra time for assessment of commercial
viability in designated States
November 2014
Patent Cooperation Treaty
5
PCT Benefits for Offices
• Provides every regional and national patent Office,
where protection is sought, the benefit of
– an International Search Report (ISR) and
– Written Opinion of the International Searching Authority
(WOISA)
– optionally, a Supplementary International Search Report
(SISR)
• by a Supplementary International Searching Authority
– optionally, an International Preliminary Report on
Patentability (Chapter II) – IPRP (CH II)
• by an International Preliminary Examining Authority (IPEA)
November 2014
Patent Cooperation Treaty
6
PCT Contracting State
• A country which is a signatory to the PCT
• Eighteen (18) Contracting States in 1978
• Currently 148 Contracting States
November 2014
Patent Cooperation Treaty
7
PCT Contracting States
LSAC – December 2014
8
PCT World Map
(148 Contracting States on 03 August 2013)
November 2014
Patent Cooperation Treaty
9
International Applications Filed
•
In 2013, estimated 205,300 PCT international applications were filed
‒ 57,793 filed in US (28.1% of total PCT filings)
•
Since the inception of the PCT system, over 2.5 million international
applications have been filed worldwide
LSAC – December 2014
10
Applications Filed at USPTO
Fiscal Year
International Applications (RO/US)
U.S. National Phase Applications
2008
54488
57345
2009
47572
57879
2010
45701
61587
2011
48285
65463
2012
52417
67573
2013
56226
73488
2014
62697
78213
• In 2014, PCT Filings in RO/US increased 11.5% from 2013
• National phase application filing increased 6.4%
LSAC – December 2014
11
The International Application
• A single application
– filed together with a Request
• by a resident/national of a PCT Contracting State
– filed in one language
– filed in one patent Office
• the receiving Office (RO)
• usually the applicant's home patent Office
– treated as a national application
• in each designated State as of the international filing date
• Formalities in compliance with the PCT
– must be accepted during national phase
November 2014
Patent Cooperation Treaty
12
Paris Convention Filing Timeline
(months)
0
12
File
application
locally
File multiple
applications
abroad
• Local patent application filed first
– multiple foreign applications filed at 12 months, claiming priority
under the Paris Convention
• multiple formality requirements
• multiple prosecutions of applications
• translations and national/regional fees required at 12 months
November 2014
Patent Cooperation Treaty
13
PCT Filing Timeline
(months)
0
12
18
File first
application
File
International
Application
International
Publication
30
Enter
national
phase
• Local patent application filed first
– single international application filed at 12 months,
claiming priority under the Paris Convention
• one set of formalities requirements
• one international phase prosecution
• translations and national/regional fees and prosecution not required
until 30 months
November 2014
Patent Cooperation Treaty
14
Two Phases of the PCT
• International phase
– Chapter I (mandatory)
– Chapter II (optional)
• National phase (stage)
November 2014
Patent Cooperation Treaty
15
Chapter I
November 2014
Patent Cooperation Treaty
16
Chapter I - Filing and Searching
• International application is
– filed in a receiving Office (RO)
– searched by an International Searching Authority (ISA)
• Documents issued
– International Search Report (Form PCT/ISA/210)
• rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203)
– Written Opinion of the ISA (Form PCT/ISA/237)
• reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373)
– optional - Supplementary International Search Report
(SISR - Form PCT/SISA/501)
November 2014
Patent Cooperation Treaty
17
Chapter I - Amendment and Publication
• Optional amendment to claims only, by applicant
– filed directly with the IB under PCT Article 19
• complete set of claims
• within 2 months of ISR mailing date
• Publication of international application by the IB
– with ISR and Article 19 amendments, if any
– available on IB web site - PATENTSCOPE
November 2014
Patent Cooperation Treaty
18
International Searching Authority (ISA)
• Each PCT Contracting State reaches agreement
– with one/more ISA(s) to search international applications filed
in its receiving Office
• Applicants who are U.S. residents or nationals
– filing in the RO/US or RO/IB can select as ISA
•
•
•
•
•
•
USPTO
European Patent Office (EPO)
Korean Intellectual Property Office (KIPO)
Australian Patent Office (IPAU)
Russian Federation (Rospatent)
Israel Patent Office (ILPO)
• USPTO acts as ISA for international applications filed in
certain other receiving Offices
November 2014
Patent Cooperation Treaty
19
International Searching and Preliminary
Examining Authorities
•
•
•
•
•
•
•
•
•
•
•
AT Austria
AU Australia
BR Brazil
CA Canada
CL Chile
CN China
EG Egypt
EP EPO
ES Spain
UK Ukraine*
SG Singapore*
•
•
•
•
•
•
•
•
•
•
FI Finland
IL Israel
IN India
JP Japan
KR Republic of Korea
RU Russian Federation
SE Sweden
US United States
XN Nordic Patent Institute
Chile
*Has not yet commenced operations
November 2014
Patent Cooperation Treaty
20
PCT System
Priority application filed
30
|
Date for calculation of all
PCT time limits
(months)
0
|
12
|
16
|
18
|
28
|
|
File local
(priority)
application
Typically a national patent
application in the country of
the applicant
November 2014
Patent Cooperation Treaty
21
PCT System – Chapter I
International Application Filed
Chapter I (no Demand filed)
Where no priority
application is filed, the IFD
is the date for calculation of
all PCT time limits
(months)
0
|
|
File local
(priority)
application
12*
|
|
File
international
application
under the PCT
*may be more than 12 months
where the international
application contains a
restoration-eligible priority claim
November 2014
Start of
International
phase
16
|
30
|
18
|
28
|
Typically filed in the same national office
international filing/search fees
one language
one set of formalities
legal effect in all PCT States
Patent Cooperation Treaty
22
PCT System – Chapter I
ISR and WOISA Issued
Chapter I (no Demand filed)
30
|
(months)
0
|
|
File local
(priority)
application
12*
|
|
File PCT
ISA:
establishes ISR citing relevant prior art
(PCT/ISA/210)
rarely, non-establishment of ISR
(PCT/ISA/203)
prepares written opinion (PCT/ISA/237)
November 2014
16
|
18
|
|
International
Search Report
(ISR) and
Written
Opinion of
ISA (WOISA)
Patent Cooperation Treaty
28
|
Time limit is the later of:
3 months after the ISA receives
the search copy
9 months after the priority date
23
International Search Report
Form PCT/ISA/210
(second sheet)
Documents
Considered to be
Relevant
24
International Search Report
Cited Documents (References)
Document Categories
Document Citations &
Relevant Passages
November 2014
Patent Cooperation Treaty
25
Three Main Categories
of Prior Art in an ISR
• “X” document
– Claimed invention lacks
• novelty or
• inventive step when considered alone
(lacks inventive step = obvious)
• “Y” documents
– Claimed invention lacks inventive step
• when two or more documents are used in
combination
• “A” document
– General state of the art reference
November 2014
Patent Cooperation Treaty
26
Three Additional Categories of
Prior Art in an ISR
• “P” document
− intervening reference
− published on or after the priority date but before the IFD
− listed as “X,P” or “Y,P” or “A,P”
• “O” document
−
−
−
−
non-written disclosure
published after the IFD
describes earlier oral disclosure
listed as “X,O” or “Y,O” or “A,O”
• “E” document
− U.S. or foreign patent or patent application published on or after
the IFD but having a filing or priority date prior to the IFD
− listed as “X,E” or “Y,E” or “A,E”
November 2014
Patent Cooperation Treaty
27
Written Opinion of the ISA
Cover Sheet
Form PCT/ISA/237
(cover sheet)
Contents of the WOISA
28
Written Opinion of the ISA
Basis of this Opinion
Form PCT/ISA/237
Box No. I
• Basis of this opinion
– application as filed
• translated
• rectified
– no amendments
• in contrast to CH II
November 2014
Patent Cooperation Treaty
29
WOISA
Reasoned Statement
Form PCT/ISA/237
Box No. V
Citations and
explanations on novelty,
inventive step and
industrial applicability of
the claimed invention
30
PCT System – Chapter I
Article 19 Amendment Filed
Chapter I (no Demand filed)
30
|
(months)
0
|
|
File local
(priority)
application
12*
|
|
File PCT
16
|
18
|
28
|
| |
ISR & (optional)
WOISA Article 19
amendment
Filed in the IB
claim amendments only
within 2 months of
ISR/WOISA mailing date
November 2014
Patent Cooperation Treaty
31
PCT System – Chapter I
International Application Publication
WIPO publishes IA
example: WO2013/018714
accessible via DERWENT
database and WIPO website
Includes ISR and any
Article 19 amendments
(months)
0
|
|
File local
(priority)
application
November 2014
Chapter I (no Demand filed)
12*
|
|
File PCT
International
Publication
|
16 18
|
|
|
ISR &
WOISA
30
|
28
|
|
Article 19
amendments
(optional)
Patent Cooperation Treaty
32
Japanese Language IA
Published under the PCT
Bibliographic Page
English translation of
Abstract
(always present where
publication is not in English)
33
Published IA with
Article 19 amendment
First page of
Amended Claims
Stamped as
AMENDED SHEET (ARTICLE 19)
34
PCT System – Chapter I
Supplementary International Search
Chapter I (no Demand filed)
Supplementary
International
International Search Report(s)
(SISR)
Publication
established
(months)
0
|
|
File local
(priority)
application
|
12*
|
|
File PCT
16
|
| |
ISR & Art
WOISA 19
Filed in the IB
prior to 19 months from priority date
indicates a Supplementary ISA (SISA)
November 2014
18
|
19
|
|
30
|
|
28
|
(optional)
Supplementary
International Search
Request
SISA:
establishes SISR citing relevant
prior art (PCT/SISA/501)
originally-filed claims searched
no written opinion produced
Patent Cooperation Treaty
35
PCT System – Chapter I
IPRP (CH I)
Chapter I (no Demand filed)
(months)
0
|
|
File local
(priority)
application
International
Publication
|
12*
|
|
File PCT
16
|
18
|
| |
ISR & Art 19
WOISA
WIPO prepares an IPRP Chapter I
using the WOISA (PCT/IB/373)
November 2014
30
|
Patent Cooperation Treaty
28
|
|
International
Preliminary
Report on
Patentability
(Chapter I)
36
IPRP Chapter I
Form PCT/IB/373
(cover letter for the WOISA)
37
PCT System
National Phase Entry from Chapter I
Enter
national
phase
Chapter I (no Demand filed)
(months)
0
|
|
File local
(priority)
application
30
|
International
Publication
|
12*
|
|
File PCT
16
|
18
|
| |
ISR & Art 19
WOISA
28
|
|
IPRP (CH I)
Applicant takes steps to pursue
patent protection in various States
express intention to enter
national phase
pay fees
provide translation
November 2014
Patent Cooperation Treaty
38
Chapter II
November 2014
Patent Cooperation Treaty
39
Chapter II (optional)
Preliminary Examination by the IPEA
• A Demand is filed with an IPEA
– usually accompanied by a response to the WOISA
• arguments, and/or
• Article 34 amendment to the description, claims, drawings
• Documents issued
– International Preliminary Report on Patentability (Chapter II)
(Form PCT/IPEA/409)
• usually the only office action issued by the IPEA
• no appeal or further prosecution during international stage once
issued
– Written Opinion of the IPEA (Form PCT/IPEA/408)
• issued only in extraordinary circumstances
November 2014
Patent Cooperation Treaty
40
International Preliminary Examining
Authority (IPEA)
• Each PCT Contracting State reaches agreement
– with one/more IPEA to examine international applications
filed in its receiving Office
• IPEA/US is a competent IPEA
– for international applications filed in RO/US
– regardless of which ISA performed the search
• IPEA/US may be a competent IPEA for IAs filed
– in RO/IB
• with some restrictions
– in certain other receiving Offices
• where ISA/US performed the search
November 2014
Patent Cooperation Treaty
41
PCT System – Chapter II
Filing of Demand for Chapter II Entry
Chapter I
(months)
0
|
|
File local
(priority)
application
30
|
International
Publication
|
12*
|
16
|
18
|
22
|
28
|
|
File PCT
| |
|
ISR & Art 19
|
WOISA
|
File demand for
International
preliminary
Time limit is the later of
examination
 Applicant “demands” additional
examination/analysis
 usually based on an amended
application and/or arguments
November 2014
Chapter
II
Patent Cooperation Treaty
3 months from mailing of
ISR (or 203) and WOISA
22 months after the
priority date
42
PCT System – Chapter II
IPRP (Chapter II)
Chapter I
(months)
0
|
|
File local
(priority)
application
Chapter
II
30
|
International
Publication
|
12*
|
|
File PCT
16
|
18
|
|
|
| Art 19
ISR &
WOISA
22
|
|
|
Demand
International Preliminary
Examining Authority (IPEA)
prepares non-binding report on
patentability
PCT/IPEA/409 & PCT/IPEA/416
November 2014
Patent Cooperation Treaty
28
|
|
International
Preliminary
Report on
Patentability
(Chapter II)
43
IPRP (CH II)
Cover Sheet
Form PCT/IPEA/409
Contents of the IPRP (CH II)
44
IPRP (CH II)
Basis of the Report
Form PCT/IPEA/409
Box No. I
• Basis of the report
– application as amended
– in contrast to WOISA
November 2014
Patent Cooperation Treaty
45
IPRP (CH II)
Reasoned Statement
Form PCT/IPEA/409
Box No. V
Citations and
explanations on
novelty, inventive step
and industrial applicability
of the claimed invention
November 2014
Patent Cooperation Treaty
46
PCT System
National Phase Entry from Chapter II
Chapter I
(months)
0
|
|
File local
(priority)
application
Chapter
II
Enter
national
phase
30
|
International
Publication
|
12
|
|
File PCT
16
|
18
|
22
|
|
|
|
|
| Art 19
Demand
ISR &
WOISA
28
|
|
IPRP(CH II)
Applicant takes steps to pursue
patent protection in various States
express intention to enter
national phase
pay fees
provide translation
November 2014
Patent Cooperation Treaty
47
The National Stage
November 2014
Patent Cooperation Treaty
48
National Stage Requirements
• PCT Articles 22 and 39 require furnishing of the
following for national/regional stage entry
– a copy of the international application
• unless already provided by the International Bureau
– a translation of the international application
• where appropriate
– the national fee
• National/Regional Offices may have additional
requirements
– PCT Applicant’s Guide provides details
November 2014
Patent Cooperation Treaty
49
35 U.S.C. 371(c) Requirements
(1) Basic national fee
(2) Copy of the IA as filed and an English
translation, if applicable
(3) Article 19 amendments, if any, and an
English translation, if applicable
(4) Oath/declaration complying with 35 U.S.C.
115 and 37 CFR 1.497
(5) English translation of any annexes to the
IPER/IPRP (amendments), if applicable
November 2014
Patent Cooperation Treaty
50
PATENTSCOPE
Available Documents
Published international
application
IPRP(CH I) – PCT/IB/373
and English translation
WOISA – PCT/ISA/237
and English translation
Priority document
ISR – PCT/ISA/210
November 2014
51
Any questions?
November 2014
Patent Cooperation Treaty
52