Introduction to the Patent Cooperation Treaty Mike Neas Special Program Examiner Office of PCT Legal Administration U.S. Patent and Trademark Office Conference.

Introduction to the Patent Cooperation Treaty

Mike Neas Special Program Examiner

Office of PCT Legal AdministrationU.S. Patent and Trademark Office

Conference on Intellectual Property in the Global Marketplace

• There is no “international patent.”

• The Patent Cooperation Treaty (PCT) functions as a patent application filing system.

• The applicant must still prosecute the international application in each national or regional office in order to obtain a patent.

Worldwide Patents?

• Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:

– Multiple formality requirements

– Multiple searches

– Multiple publications

– Multiple examinations and prosecutions of applications

– Translations and national fees required at 12 months

– continued –

Traditional Patent Systems

0 12File Application

LocallyFile Applications

Abroad

(Months)

Traditional Patent Systems, cont.

• A United Nations treaty

– Signed in June 1970 at the Washington Diplomatic Conference

– Became operational in June 1978

– Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland

The Patent Cooperation Treaty

• To simplify the process of filing foreign patent applications

• To give every regional and national patent office the benefit of a search and a preliminary report on patentability by a major patent office

Purposes of the PCT

• A country which is a signatory to the PCT

• Eighteen Contracting States in 1978

• Currently 126 Contracting States

– Comoros became bound by the Treaty on April 3, 2005.

– Nigeria became bound by the Treaty on May 8, 2005.

– As of September 15, 2005, when Libya becomes bound by the Treaty, 127 Contracting States.

PCT Contracting State

AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent AT Austria

BE BelgiumBG Bulgaria

CH Switzerland CY Cyprus

CZ Czech Republic

DE GermanyDK DenmarkEE Estonia

ES SpainFI Finland

FR FranceGB United Kingdom

GR Greece HU Hungary IE Ireland IT Italy

IS IcelandLI

LiechtensteinLT Lithuania

LU LuxembourgLV Latvia

MC Monaco NL Netherlands

PL PolandPT PortugalRO Romania

SE Sweden SK Slovakia

TR Turkey

BW BotswanaGH GhanaGM GambiaKE KenyaLS LesothoMW MalawiMZ Mozambique SD SudanSL Sierra Leone

SZ SwazilandTZ United Republic

of TanzaniaUG UgandaZM ZambiaZW Zimbabwe

AM ArmeniaAZ Azerbaijan BY Belarus KG Kyrgyzstan KZ KazakhstanMD Republic of

MoldovaRU Russian

FederationTJ TajikistanTM Turkmenistan

BF Burkina Faso BJ Benin CF Central African

Republic CG Congo CICôte d’Ivoire CM Cameroon GA Gabon GN Guinea GQ Equatorial

Guinea GW Guinea-Bissau ML Mali MR Mauritania NE Niger SN Senegal TD Chad TG Togo

Regional PatentsStates Designated for Regional Protection

Regional patent only

AE United Arab Emirates AG Antigua and Barbuda AL Albania

AU AustraliaBA Bosnia and Herzegovina BB BarbadosBR Brazil BZ BelizeCA CanadaCN ChinaCO Colombia CR Costa RicaCU Cuba DM DominicaDZ Algeria EC Ecuador EG EgyptGD Grenada GE GeorgiaHR Croatia

NG NigeriaNO NorwayNZ New ZealandOM OmanPG Papua New Guinea PH PhilippinesSC SeychellesSG SingaporeSM San Marino

SY Syrian Arab Republic TN Tunisia

TT Trinidad and TobagoUA UkraineUS United States of AmericaUZ UzbekistanVC Saint Vincent and the

Grenadines VN Viet NamYU Serbia and MontenegroZA South Africa

ID IndonesiaIL IsraelIN India IS IcelandJP JapanKM Comoros KP Democratic People’s

Republic of KoreaKR Republic of Korea

LC Saint LuciaLK Sri LankaLR LiberiaMA MoroccoMG MadagascarMK The former Yugoslav Republic of MacedoniaMN MongoliaMX MexicoNA NamibiaNI Nicaragua

National PatentsStates Designated for National Protection

015,00030,00045,00060,00075,00090,000

105,000120,000135,000

1978

1980

1982

1984

1986

1988

1990

1992

1994

1996

1998

2000

2002

2004

121,264

Number of International Applications Received

Record Copies Received by Country of Origin

42,713

• To file in up to 126 countries with a single international application

• To delay the expenses associated with:

– Translations

– Foreign filing fees

– Local associates

– continued –

Advantages of the PCT

Advantages of the PCT, cont.

• To provide an early indication of pertinent prior art and written opinion as to the novelty, inventive step and industrial applicability of the claimed invention

• To give extra time for assessment of commercial viability in designated states

• Local application followed within 12 months by the PCT, claiming priority under the Paris Convention.

– One set of formalities requirements

– International search

– International publication

– Optional international preliminary examination

– Translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry

PCT System

File Demand

File First Application

File PCT

InternationalSearch Report/

Written Opinion

InternationalPublication

0 12 16 18

InternationalPreliminaryExamination

(Months)

OR

30

20

EnterNational Phase

Chapter I

Chapter II

30

PCT System

• A single application is:

– 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.

• Compliance with the form prescribed for the international application must be accepted by all designated States during national stage.

The International Application

For International Applications Filed with USPTO

• Competent receiving office for residents and nationals of the U.S.

• Language of filing: English

• Number of copies required: One

• Competent International Searching Authorities (ISAs): USPTO, European Patent Office (EPO)*

• Competent International Preliminary Examining Authorities (IPEAs): USPTO, EPO (only if EPO was ISA)

* EPO will not search applications with claims directed to “business methods.”

IPEA/US IPEA/EP

RO/US

ISA/US ISA/EP

Choices for U.S. Nationals and Residents

Filing International Applications in the RO/US

• Patent attorneys or agents registered to practice before the PTO may represent applicants in international applications.

• Applicants may choose to represent themselves in international applications.

• All international applications are screened for compliance with U.S. national security provisions before the record copy is forwarded to the IB.

• RO/US does not accept filing of international applications by fax.

• International phase:

– Chapter I

• Designated offices

– Chapter II (optional)

• Elected offices

• National phase (stage)

Two Phases of the PCT

• International application filed

• International search performed by the ISA

• International search report and written opinion of the ISA prepared

– continued –

Chapter I Proceedings

Chapter I Proceedings, cont.

• Optional amendment to the claims only

– Filed with the IB of WIPO under Article 19 after search report mailed

• International application, search report and Article 19 amendment published by IB

– Published pamphlet sent to designated States by IB

– Written opinion of the ISA is not published

• A request:

– Form PCT/RO/101, or

– Computer-generated request (e.g, PCT-SAFE request).

• A description of the invention

• One or more claims

• One or more drawings where necessary to illustrate the invention

• An abstract

Parts of an International Application

Article 11(1) Requirements for According an International Filing Date

• Applicant has right to file with RO for reasons of residence or nationality (Rules 18 and 19).

– Application transmitted to IB as RO under Rule 19.4(a) if applicant is resident or national of PCT Contracting State but not national or regional office where filed.

– continued –

Article 11(1) Requirements, cont.

• Application is in a language prescribed by the RO. (Rule 12.1)

– Application transmitted to IB as RO under Rule 19.4(b) if not in a language prescribed by the national or regional office where it was submitted.

– continued –

• Application must contain:

– An indication that it is intended as an international application filed under the PCT. (Rule 4.2)

– A designation of at least one Contracting State.

• Filing of a request constitutes the designation of all Contracting States bound by the Treaty on the international filing date.

– Name of the applicant (Rule 4.5)

– A description (Rule 5)

– One or more claims (Rule 6)

Article 11(1) Requirements, cont.

Not Required for Obtaining an International Filing Date

• Payment of fees

• Applicant’s signature

• Title of the invention

• Abstract

• Formal drawings

• Transmittal fee is $300

• Search fee:

– ISA/US:

• $300: If there is a corresponding prior U.S. national application under 35 USC 111(a) and the conditions under 37 CFR 1.445(a)(2)(i) are met

• $1,000: All other situations

– ISA/EP is $2,075

– continued –

Chapter I Fees

• International filing fee:

– $1,211: For first 30 pages of the international application

– $13: For each additional page over 30

• Priority document fee is $20.

• Due within one month of the date of receipt of the international application

Chapter I Fees, cont.

• To formulate a preliminary, non-binding opinion on whether the claimed invention appears.

– To be novel

– To involve an inventive step (that is, to be non-obvious)

– To have industrial applicability

Purposes of Chapter II

• Demand is filed with a competent IPEA.

– May include amendments to description, claims and drawings under Article 34

• International Preliminary Report on Patentability (Chapter II) is prepared by IPEA and sent to:

– Applicant and IB by IPEA

– Elected States by IB at 30 months

Chapter II Proceedings

• Handling fee is $173

• Preliminary examination fee is:

– $600: If USPTO was the ISA

– $750: If the USPTO was not the ISA

• Due within one month from the date of submission of the demand or 22 months from the priority date, whichever expires later.

Chapter II Fees

• Prepare translations of the international application into languages required by the desired patent offices, as applicable.

• Transmit translation and necessary fees to each desired national or regional patent office previously designated/elected.

• Details for entry in each contracting state can be found in the PCT Applicant’s Guide.

Steps for National Stage Entry

• Manual of Patent Examining Procedure (MPEP):

– Chapter 1800

– Appendix T (PCT and regulations)

– Appendix AI (PCT Administrative Instructions)

• PCT Help Desk:

– Phone: 571-272-4300 (new as of July 1, 2005)

– Fax: 571-273-0419

– continued –

PCT Resources

• PCT home page on PTO Internet site:

– www.uspto.gov/go/pct/

• PCT newsletter, PCT Applicant's Guide, etc., available on the Internet:

– www.wipo.int/pct/en/index.html

• GAO Report No. GAO-03-910 (“Experts’ Advice for Small Businesses Seeking Foreign Patents”):

– www.gao.gov

• WIPO’s Small and Medium-Sized Enterprises Division:

– www.wipo.int/sme/en/

PCT Resources, cont.

Conference on Intellectual Property in the Global Marketplace

[presenter’s email address]

THANK YOU

Introduction to the Patent Cooperation Treaty