Transcript PCT FILING ADVANTAGES© June 21, 2012 Dr. S. Padmaja, Managing Partner, iProPAT.

PCT FILING ADVANTAGES©
June 21, 2012
Dr. S. Padmaja, Managing Partner, iProPAT
Patent Cooperation Treaty
June 21, 2012
PCT
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Established June 19, 1970
currently 146 countries
filing of single international application
not itself result in the grant of a patent,
India – December 7, 1998
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Conventional Filing
Months
0
File local
application
12
US
CA
EP
AU
File applications
individually
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Conventional Filing
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Local patent application followed by individual
country applications to claim right of priority
Multiple forms / formality requirements
Filing fee and translation fee at the time of
filing
Multiple searches / examinations
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PCT - System
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It is only a filing system
It is not a granting system
There is no PCT patent or WO Patent
Only PCT application or a PCT publication
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Conventional vs PCT Filing
12
0
File local
application
0
US
CA
EP
AU
12
File applications
individually
International
Publication
16 18
US
22
28
CA
EP
File local
application
Months
File PCT
application
ISR & WO
File demand for
IPE
IPER
JP
AU
Enter National
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Phase
International Application
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international publication – An effective means of advertising
and looking for potential licensees.
Has the effect of filing in all the designated states as if a
national patent application had been filed with the national
patent office of that State.
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Minimum requirements
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Request with the required fees
Name of the applicant
Inventors
Description
Claims
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Where can the IA be filed
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Receiving office
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At least one of the applicants has the right to file
with the RO
International Bureau
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How can the IA be filed
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Using Request form
PCT Easy
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Appropriate fee reductions available
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Fees to be paid for filing
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Transmittal fee
International filing fee
Additional pages
Searching fee
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Defects that can be corrected
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Not a correct Receiving office
If the application is filed in a language not
acceptable by the RO
Errors in the nationality and address of the applicant
Missing priority
Missing fees / signatures
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Defects result in change of filing date
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Missing sheets
In description
 Claims
 Drawings
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International Search
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Competent ISA
Check unity of invention
16 month
Establishes ISR
Establishes Written Opinion
Classifies the prior art into different categories
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International Preliminary Report
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IPRP
File Demand for IPE
Established IPEA
Request can be made at 3 months from ISR or 22
months
Established at the end of 28th month
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PCT Chapter I and Chapter II
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Advantages of PCT - system
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It enables filing of one single application designating
all member countries
Filed in one language with one office.
One set of formal documents
Possibility to delay as much as possible the national
procedures, and the respective fees and translation
costs.
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Advantages of PCT - system
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International search report / written opinion
International Publication
International Preliminary Examination
Translations and national fees required only if
applicant wishes to proceed.
Provides a strong basis for patenting decisions.
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Thank You
June 21, 2012