Options to Protect an Invention: the Patent Cooperation Treaty (PCT) and Trade Secrets Hanoi October 24, 2017 Peter Willimott Senior Program Officer WIPO Singapore Office

What is a Patent? A patent is an exclusive right granted for an invention, The invention must be a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem To get a patent, technical information about the invention must be disclosed to the public in a patent application i.e. how it works This is the balance in the patent system: the inventor must disclose how the invention works and in return the government grants a 20 year monopoly on that invention

How to get a Patent? A patent application must be lodged with the national IP office To be granted the patent must meet three main conditions: 1. The invention must show an element of novelty; that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called “prior art”.

Prior Art

How to get a Patent? A patent application must be lodged with the national IP office To be granted the patent must meet certain conditions: 2. The invention must involve an “inventive step” or be “non-obvious”, which means that it could not be obviously deduced by a person having ordinary skill in the relevant technical field.

How to get a Patent? A patent application must be lodged with the national IP office To be granted the patent must meet certain conditions: 3. The invention must be capable of industrial application, meaning that it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or be useful. Theories or ideas can’t be patented.

Examples of Patents

Examples of Patents

Examples of Patents

World Patent Patent There is no such thing as a “world patent”

International Patent Protection through the Patent Cooperation Treaty (PCT) Inventor: I have an invention. How can I protect it in several countries? Attorney: You have a few options. For example: (a) Do nothing (b) you can file separate patent applications at the same time in all of the countries in which you would like to protect your invention; (c) you can file a patent application in a Paris Convention country, and then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of the filing date of the first application; (d) you can file an application under the PCT, which is simpler, easier and more cost-effective than either (b) or (c) or (e) trade secret?

Options The direct route - file national application/s with the IP Office of each country in which protection is sought

Common Feature of WIPO Global IP Services Independent Filings vs WIPO Registration Systems SIMPLER! National Route Using the PCT Receiving Office International Bureau of WIPO

Using the traditional patent approach to seek patents overseas (months) 12 File applications abroad File application locally 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

Traditional Patent System vs. PCT System Fees for: --translations --Office fees --local agents File applications abroad (months) 12 Traditional Fees for: --translations --Office fees --local agents File local application Enter national phase International publication (months) PCT 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) demand for International preliminary examination (optional) International preliminary report on patentability

Geographic Coverage of the PCT in 2017 PCT = 152 contracting states

General Remarks on the PCT System The PCT system is a patent application “filing” system, not a patent “granting” system. There is no “PCT patent” or “global patent” The decision on granting patents is made exclusively by national or regional Offices in the national phase Only inventions may be protected via the PCT - design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively

The PCT… and Business Most businesses worldwide which seek and use patents wish to: control costs while preserving options make informed business decisions use the best tools available when seeking protection

Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which— 1. postpones the major costs associated with internationalizing a patent application

PCT Filing Cost Scenario Individual applicant from Cambodia PCT filing costs: Transmittal fee: 150USD International filing fee: Normally is 1330CHF ( $1365USD), but Vietnam applicants receive 90% discount, therefore 133CHf (US$136) Search fee (EP): Normally is 2,099USD 75% reduction applied by EPO, therefore is US$525 $811 USD

Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which— 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions

Example: PCT International Search Report Symbols indicating which aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc.) The claim numbers in your application to which the document is relevant Documents relevant to whether or not your invention may be patentable

Example: PCT Written opinion of the International Searching Authority Reasoning supporting the assessment Patentability assessment of claims

PCT Training Options 29 PCT training videos on WIPO’s Youtube channel and WIPO’s PCT page http://www.wipo.int/pct/en/training/index.html PCT distance learning course content available in the 10 PCT publication languages https://welc.wipo.int/acc/index.jsf?page=courseCatalog.xhtml&lang=en&cc=PCT_101E#plus_PCT_101E

Trade Secrets as a Consideration Any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Can include manufacturing or industrial secrets e.g. a process or formula and commercial secrets e.g. sales methods and advertising strategies.  General standards exist: The information must be secret It must have commercial value because it is a secret. It must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements).

Trade Secrets as a Consideration Advantages: No registration process Immediate Can last forever Disadvantages: Not suitable if invention can be reverse engineered Once the secret is out, anyone can use it Doesn’t stop a competitor from legitimately inventing the same thing More difficult to enforce than a patent

Thank you! Peter Willimott Senior Program Officer WIPO Singapore Office Email: singapore.office@wipo.int WIPO Website: http://www.wipo.int/ WIPO Singapore Office (WSO): http://www.wipo.int/singapore/