Transcript Diapositive 1

Joint Degree Master Programme in Intellectual Property Law
SS. Cyril and Methodius University
Iustinianus Primus Law Faculty
and
University of Strasbourg (UdS)
Centre for International Intellectual Property Studies (CEIPI)
Course on the
International Patent Filing System:
The Patent Cooperation Treaty (PCT)
-- March 2014 --
By: Isabelle BOUTILLON
Adjunct Professor, CEIPI
I. Boutillon – March 2014 - CEIPI
1
Document established
partly on the basis of articles published by the author in
« JurisClasseur, LexisNexis, France »
and partly on the basis of documentation published by
the World Intellectual Property Organization (WIPO)
on www.wipo.int/pct/en
I. Boutillon – March 2014 - CEIPI
2
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
3
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. Boutillon – March 2014 - CEIPI
4
I.- Introduction: the PCT system …
is a patent FILING system
simplifying and streamlining the patent procedure
for obtaining patent protection in multiple countries
for applicants worldwide
[PCT Preamble]
is NOT a patent GRANTING system
there are no « PCT patents »
or « international patents »
is THE ONLY INTERNATIONAL patent filing system
existing today
I. Boutillon – March 2014 - CEIPI
5
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
6
II.- A few important dates
Conclusion of the Treaty: June 1970
Entry into force: January 1978
Start of operations: June 1, 1978
18 Contracting States
same day as the European Patent Convention (EPC)
Today:
148 Contracting States
More than 110 offices and International Authorities
~180,000 new PCT applications filed per year worldwide
I. Boutillon – March 2014 - CEIPI
7
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. Boutillon – March 2014 - CEIPI
8
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
9
III.- The PCT: a treaty, a system and a framework
International TREATY in the field of patents
"Special agreement" under Article 19 of the Paris
Convention
Administered by WIPO
[PCT Art. 1]
The PCT Contracting States constitute a UNION
"International Patent Cooperation Union"
[PCT Art. 1]
The ASSEMBLY of the Union consists of
the Contracting States
I. Boutillon – March 2014 - CEIPI
[PCT Art. 53]
10
About … Treaty, Cooperation and Patents
[PCT Art. 1]
Treaty
Contracting 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 » ?
I. Boutillon – March 2014 - CEIPI
[PCT Art. 1]
[PCT Art. 1, 2]
11
PCT Offices and International Authorities
Existing national / regional Offices
[PCT Art. 2, 10,
16, 22, 32]
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)
I. Boutillon – March 2014 - CEIPI
[PCT Art. 55]
12
Role of offices and authorities in the PCT procedure
receiving Office
International Searching
Authority
International Preliminary Examining
Authority
designated Office
elected Office
International Bureau of WIPO
International Bureau acting as
« universal » and « safeguard »
receiving Office
I. Boutillon – March 2014 - CEIPI
RO
filing
ISA
International search and (unilateral)
examination
IPEA
DO/EO
examination (with possible intervention
by applicant)
national phase
IB
PCT system administration in general
international publication
access to the files
RO/IB
competent as any national / regional
receiving Office,
- but in all cases
- and also as a safeguard
13
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
[PCT Art. 1, 44, 45]
- bilateral
- technical
multiples national / regional legislations
[PCT Art. 27]
I. Boutillon – March 2014 - CEIPI
14
« Patents Space »
Paris Convention
PCT
TRIPS Agreement
ARIPO
PLT
EPC
Budapest Treaty
EAPC
Strasbourg Arrangement
OAPI
CH - LI
TREATY
I. Boutillon – March 2014 - CEIPI
National laws
Bilateral Agreements
with EPO
15
The PCT Texts
8 main types of text
articulated in 5 hierarchical levels
Main legal texts expressly provided for by the Treaty:
Regulations, Gazette, Agreements, Administrative
Instructions, Fees Guidelines
[PCT Art. 58, 55, 16, 32,
58.4; Reg R. 15, 16, 57]
Other essential texts (legal and/or technical) developed
within the framework of the main texts, to assist:
offices, authorities
and applicants, patent agents, attorneys
I. Boutillon – March 2014 - CEIPI
16
The PCT Texts structure
PCT Treaty
Gazette
Agreements
Regulations
Guidelines
on fees
Guidelines for
international search
and examination
Administrative
Instructions
Guidelines for
receiving Offices
PCT Applicant’s Guide
PCT Newsletter
I. Boutillon – March 2014 - CEIPI
17
The main two PCT Texts
The Treaty
concluded in June 1970
modified in September 1979, February 1984 and
October 2001
Current version is in force since October 3, 2001
Regulations
adopted in June 1970
modified more than 30 times since
Current version is in force since January 1, 2013
Next version will be in force as from July 1, 2014
I. Boutillon – March 2014 - CEIPI
18
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
19
IV.- General overview of the procedure:
… recalling the traditional patent system under
the Paris Convention
First filing of the patent
application at the
national or regional
stage *
[months]
0
*
In the framework of regional arrangements
* (ARIPO, EAPC, EPC, OAPI)
*
I. Boutillon – March 2014 - CEIPI
Subsequent filings of
national or regional *
applications claiming the
priority of the first filing
12
National or regional *
granting procedures of
various length,
complexity and cost
20
The PCT system
PCT Filing
with priority claim
[months]
0
12
30
International phase
First national or
regional filing
National phases
before
designated offices
I. Boutillon – March 2014 - CEIPI
21
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
22
V.- Procedure step-by-step: the international phase in 5 steps
Chapter I
of Treaty
1st step
--PCT
filing
(months)
0
2nd step
--international
search and
examination
(unilateral)
12
priority
Chapters I and II
of Treaty
I. Boutillon – March 2014 - CEIPI
3rd step
--international
publication
16
18
19
4th step
- optional step --international
supplementary
search
22
5th step
- optional step --international preliminary
examination (continuation of
examination with possible
intervention by
applicant)
30
National
phases
23
Main time limits to monitor
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) ?
I. Boutillon – March 2014 - CEIPI
24
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
25
V.-A- Filing of the international application
The applicant
natural person
legal entity
[PCT Art. 9;
Reg R. 18; Art. 27.3 ]
[PCT Art. 10;
Where to file: the receiving Office
Reg R. 19]
national Office
regional Office
International Bureau acting as receiving office
I. Boutillon – March 2014 - CEIPI
26
Requirements for an international filing date
[PCT Art. 11.1]
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 State
name of applicant
description
at least one claim
I. Boutillon – March 2014 - CEIPI
27
Designations of PCT Contracting States
Global and automatic
filing of request = all designations
available on the date of filing
[PCT Art. 4, 11.1(iii)(b);
Reg R. 4.9]
Choice of types of protection : at national phase stage
national / regional patent
patent / other title
No designation fee required
I. Boutillon – March 2014 - CEIPI
[PCT Art. 4;
Reg R. 4.9, 49bis]
[PCT Art. 4.2;
Reg R. 15]
28
Still about the filing
[PCT Art. 14]
Important elements not required upon filing of the
application, which can be submitted subsequently :
fees
translation
signature, power of attorney
abstract
[PCT Reg R. 19.1, 19.4]
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)
I. Boutillon – March 2014 - CEIPI
29
Effects of the international application
International filing = regular national filing
[PCT Art. 11.4, Paris Conv.]
International filing date
= effective filing date in each designated State
= starting point of the international phase
= potential priority date (Paris Convention)
[PCT Art. 11.3, 11.4]
I. Boutillon – March 2014 - CEIPI
30
PCT filing with priority claim
First national or
regional filing
[months]
0
[PCT Art. 2(xi), 8; Reg R.4.10]
PCT = filing under priority
12
30
International phase
National phases
before
designated Offices
PCT filing without priority claim
PCT = first filing or filing
outside of priority period
[months]
0
30
International phase
I. Boutillon – March 2014 - CEIPI
31
« Priority date »
[PCT Art. 2(xi)]
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
I. Boutillon – March 2014 - CEIPI
32
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
33
V.-B- Search and examination: an overall view
International
Search
Report
0
Priority
12
Supplementary
International Search
Report
Written
opinion
16
PCT
Filing
18
19
International
publication
22
International
Preliminary Report on
Patentability
IPRP
Chapter I or Chapter II
28
Demand for international
preliminary examination
30
Entry into
national
phases
Supplementary
international
search request
I. Boutillon – March 2014 - CEIPI
34
General framework for search and examination
[PCT Art. 16, 32]
International Searching Authorities (ISA)
International Preliminary Examining Authorities (IPEA)
International agreements between each ISA/IPEA and
the International Bureau
PCT Search and Examination Guidelines
I. Boutillon – March 2014 - CEIPI
35
International Authorities (ISAs/IPEAs) available
19 ISAs/IPEAs appointed by PCT Union Assembly
of which 17 are in operation
National Offices of the following 15 PCT States:
AT Austria, AU Australia, BR Brazil, CA Canada, CN China,
EG Egypt, ES Spain, FI Finland, IL Israel, IN India, JP Japan,
KR Republic of Korea, RU Russian Federation, SE Sweden and US
and the following 2 Offices: EPO and Nordic Institute (XN)
[The national Offices of CL Chile and UA Ukraine 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
[PCT Art. 16, 32;
I. Boutillon – March 2014 - CEIPI
Reg R. 35, 59]
36
International search and written opinion by
International Searching Authority (ISA)
International
Search
Report (ISR)
0
12
Written
opinion
by ISA
16
18
30
2 months
modifications
of the claims
I. Boutillon – March 2014 - CEIPI
37
International search
Purpose of search
relevant state of the art
relevant date (PCT filing date)
Documentation to be used by ISA
minimum PCT documentation
other documentation held by ISA
[PCT Art. 15; Reg R. 33]
[PCT Reg R. 34]
International Search Report (ISR)
[PCT Art. 18; Reg R. 43]
citations of relevant documents
indication according to the International Patent
Classification (IPC)
fields on which the search was carried out
I. Boutillon – March 2014 - CEIPI
38
Written Opinion by the ISA
Characteristics
preliminary, non binding
novelty ?
inventive step ?
industrial application ?
[PCT Art. 34; Reg R. 43bis]
First step of the examination procedure
obligatory and unilateral
on the basis of the PCT application as filed
Relevant date = priority date
I. Boutillon – March 2014 - CEIPI
[PCT Reg R. 43bis]
39
Applicant’s reply, reaction, next step
Amend the claims ?
[PCT Art. 19; Reg R. 46]
Request international preliminary examination
(under Chapter II of the Treaty) ?
[PCT Art. 31]
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 »)
[PCT Reg R. 44bis]
I. Boutillon – March 2014 - CEIPI
40
Supplementary international search
Written
opinion
by ISA
(months)
16
18
19
Supplementary
international
search
requested
?
30
no
28
yes
I. Boutillon – March 2014 - CEIPI
Supplementary
International
Search Report
41
If international preliminary examination is not requested
Written
opinion
by ISA
(months)
16
no
18
19
22
Preliminary
examination
requested
?
International
Preliminary Report on
Patentability
(IPRP ch.I)
30
NOTE: Supplementary
International Search
may have been
requested or not
I. Boutillon – March 2014 - CEIPI
42
If international preliminary examination is requested
(1rst)
Written
opinion
by ISA
Written
opinion by
IPEA
Preliminary
examination
requested
?
yes
Written
opinion by
IPEA
International
Preliminary Report
on Patentability
(IPRP ch.II)
22
Demand for
international
preliminary
examination
[preferably with]
Amendments or
arguments (in
response to written
opinion by ISA)
I. Boutillon – March 2014 - CEIPI
(2nd)
28
30
Amendments
or arguments
(in response to
(2nd) written
opinion by
IPEA)
43
International preliminary examination
Purpose of examination
preliminary non binding opinion
novelty ?
inventive step ?
industrial application ?
[PCT Art. 31, 33]
[PCT Art. 31; Reg R. 53, 54]
Examination procedure
not 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
I. Boutillon – March 2014 - CEIPI
[PCT Reg R. 64]
44
Applicant’s reply, reaction, next step
[PCT Art. 34; Reg R. 66]
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
I. Boutillon – March 2014 - CEIPI
45
At the end of the international preliminary
examination
[PCT Art. 35; Reg R. 44bis]
« IPRP Ch. I » – the obligatory and unilateral opinion on patentability
or « IPRP Ch. II » – the optional opinion on patentability with
possibility of dialog with the examiner
= closing of the PCT 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
I. Boutillon – March 2014 - CEIPI
46
At the end of the international phase
and before entering into the national phase
The applicant has at least:
[PCT Art. 18, 35;
Reg R. 44bis, 45bis]
an International Search Report
an International Preliminary Report on Patentability (IPRP):
either under Chapter I (IPRP Ch. I)
or, if the applicant has requested it, under Chapter II (IPRP Ch. II)
If he has requested it, the applicant also has:
a Supplementary International Search Report
I. Boutillon – March 2014 - CEIPI
47
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
48
V.-C- Publication
[PCT Art. 21; Reg R. 48]
Time limit : shortly after the expiration of 18 months
from the priority date
Contents
[PCT Art. 55.4);
Reg R. 48, 86]
international application per se
and the « Gazette »
(now referred to as « Official Notifications »)
Language(s) of publication
Effects of publication
state of the art
provisional protection
access to file by third parties
I. Boutillon – March 2014 - CEIPI
[PCT Reg R. 48]
[PCT Art. 21, 29, 30;
Reg R. 33, 34, 94]
49
A few other questions relating to international
publication
Electronic form of publication
Communication to designated Offices
[PCT Reg R. 48]
[PCT Art. 20; Reg R. 47]
Prevent publication ?
[PCT Reg R. 90bis.1]
Postpone publication ?
[PCT Reg R. 90bis.3]
Advance publication ?
[PCT Art. 21.2; Reg R. 48]
Cases where there will be no publication
[PCT A. 11, 14, 24, 64;
Reg R. 29, 90bis]
I. Boutillon – March 2014 - CEIPI
50
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
51
V.-D- Entry into national phase
Applicant’s decision
initiative
where (designated office(s))
how
General time limit :
30 months from priority date
31 or more
reinstatement of rights
Early entry
I. Boutillon – March 2014 - CEIPI
[PCT Art. 22, 39;
Reg R. 49, 76]
[PCT Art. 22, 23, 39, 40]
[PCT Reg R. 49.6]
[PCT Art. 23, 40]
52
National phase
0
12
International phase
30
31
National phases
Granted
patents
No national
phase
I. Boutillon – March 2014 - CEIPI
Rejection or
abandonment
53
Acts which constitute entry into national phase
[PCT Art. 22, 39]
Applicant must do the following:
make an express request for entry into national phase
file a translation of the application
pay the national fees
The International Bureau transmits to each designated
Office, copies of the following documents on behalf of
the applicant:
[PCT Art. 20;
PCT application as published
Reg R. 17.2, 70]
priority document
International Search Report
International Preliminary Report on Patentability
I. Boutillon – March 2014 - CEIPI
54
National requirements remaining to be complied
with upon entry into national phase
Furnishing of proofs of allegations / declarations
names, indications, documents
[PCT Art. 27.2, 27.3,
27.4; Reg R.51bis]
Requirement for mandatory representation
appointment of a local agent or attorney
Substantive conditions of patentability
definition of prior art
evidence
I. Boutillon – March 2014 - CEIPI
[PCT Art. 27.7]
[PCT Art. 27.5, 27.6]
55
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
56
V.-E- Access to the file of the international application
Who has access
the applicant
any person authorized by the applicant
third parties
[PCT Art. 30, 38;
Reg R. 17.2, 94]
To which documents contained in the file of the
international application
At which Office or Authority
International Bureau
designated / elected Offices
others ?
As of when
I. Boutillon – March 2014 - CEIPI
57
Access to the file of the international application
by third parties –situation until 30.06.2014
IB
IB
[months]
As from 30 months,
ACCESS to
certain items relating to
examination: ISA written opinion,
IPRP (Ch.I or Ch.II)
Before international
publication:
NO ACCESS
0
12
18
30
IB
As from international
publication, ACCESS to all
items in the file other than
those relating to examination
(Ch. I or Ch. II)
I. Boutillon – March 2014 - CEIPI
DO
EO
National phases:
ACCESS according to
national law
58
Access to the file of the international application
by third parties – situation as from 01.07.2014
IB
IB
[months]
As from 30 months,
ACCESS to
certain items relating to
examination:
IPRP (Ch.I or Ch.II)
Before international
publication:
NO ACCESS
0
12
18
30
IB
As from international
publication, ACCESS to all
items in the file, including to
ISA written opinion, but not
to other documents relating
to examination (Ch. II)
I. Boutillon – March 2014 - CEIPI
NOTE: Situation applicable to PCT
applications filed on or after 01.07.2014
DO
EO
National phases:
ACCESS according to
national law
59
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 step
V.-A- Filing
V.-B- Search and examination
V.-C- Publication
V.-D- Entry into national phase
V.-E- Access to the file
VI.- Conclusion
I. Boutillon – March 2014 - CEIPI
60
VI.- Conclusion (1)
From the viewpoint of the main beneficiaries of the
system: the applicant and his agent
advantages
single procedure
great flexibility
predictability of the international phase
main steps and main time limits
guarantees
minimum requirements
last minute filing
reasonable time limits
numerous safeguards
I. Boutillon – March 2014 - CEIPI
61
VI.- Conclusion (2)
From the viewpoint of the institutional beneficiaries
of the system: the Contracting States, their
offices and authorities
predictability of the international phase
main steps and main time limits
sharing of work = reduction of unnecessary
duplication in the national phase
assistance for technical cooperation
I. Boutillon – March 2014 - CEIPI
62
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
I. Boutillon – March 2014 - CEIPI
63
VI.- Conclusion (4)
Constant evolution requiring involvement of
Contracting States
IP offices
WIPO
all users (applicants, agents, other users)
Potential for yet future developments
I. Boutillon – March 2014 - CEIPI
64
The end.
I. Boutillon – March 2014 - CEIPI
65