Course on the International Patent Filing System: 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

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

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.- Introduction: about the « PCT » The « PCT » is an international multilateral treaty The « PCT » as a treaty is the foundation for the « PCT system »

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 is NOT a patent GRANTING system there are no « PCT patents » or « international patents » is THE ONLY INTERNATIONAL patent filing system existing today [PCT Preamble]

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

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

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.- 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

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 The PCT Contracting States constitute a UNION "International Patent Cooperation Union" The ASSEMBLY of the Union consists of the Contracting States [PCT Art. 1] [PCT Art. 1] [PCT Art. 53]

About … Treaty, Cooperation and Patents 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 » ? [PCT Art. 1] [PCT Art. 1] [PCT Art. 1, 2]

PCT Offices and International Authorities Existing national / regional Offices 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) [PCT Art. 2, 10, 16, 22, 32] [PCT Art. 55]

Role of offices and authorities in the PCT procedure receiving Office International Searching Authority International Preliminary Examining Authority designated Office elected Office RO filing International search and (unilateral) examination examination (with possible intervention by applicant) national phase ISA IPEA DO/EO PCT system administration in general international publication access to the files competent as any national / regional receiving Office, - but in all cases - and also as a safeguard International Bureau of WIPO International Bureau acting as « universal » and « safeguard » receiving Office IB RO/IB

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 - bilateral - technical multiples national / regional legislations [PCT Art. 1, 44, 45] [PCT Art. 27]

Strasbourg Arrangement Bilateral Agreements with EPO « Patents Space » Paris Convention PCT TRIPS Agreement ARIPO PLT EPC Budapest Treaty National laws EAPC Strasbourg Arrangement OAPI Bilateral Agreements with EPO CH - LI TREATY

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 Other essential texts (legal and/or technical) developed within the framework of the main texts, to assist: offices, authorities and applicants, patent agents, attorneys [PCT Art. 58, 55, 16, 32, 58.4; Reg R. 15, 16, 57]

The PCT Texts structure PCT Treaty Gazette Agreements Regulations Guidelines on fees Administrative Instructions Guidelines for international search and examination Guidelines for receiving Offices PCT Applicant’s Guide PCT Newsletter

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.- 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

IV.- General overview of the procedure: … recalling the traditional patent system under the Paris Convention Subsequent filings of national or regional * applications claiming the priority of the first filing First filing of the patent application at the national or regional stage * [months] 12 National or regional * granting procedures of various length, complexity and cost * In the framework of regional arrangements (ARIPO, EAPC, EPC, OAPI) * *

PCT Filing with priority claim The PCT system PCT Filing with priority claim [months] 12 30 International phase First national or regional filing National phases before designated offices

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

V.- Procedure step-by-step: the international phase in 5 steps Chapter I of Treaty 2nd step --- international search and examination (unilateral) 4th step - optional step - --- international supplementary search 3rd step --- international publication 1st step --- PCT filing (months) 12 16 18 19 30 22 priority National phases 5th step - optional step - --- international preliminary examination (continuation of examination with possible intervention by applicant) Chapters I and II of Treaty

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.- 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

V.-A- Filing of the international application The applicant natural person legal entity Where to file: the receiving Office national Office regional Office International Bureau acting as receiving office [PCT Art. 9; Reg R. 18; Art. 27.3 ] [PCT Art. 10; Reg R. 19]

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

Designations of PCT Contracting States [PCT Art. 4, 11.1(iii)(b); Reg R. 4.9] Global and automatic filing of request = all designations available on the date of filing Choice of types of protection : at national phase stage national / regional patent patent / other title No designation fee required [PCT Art. 4; Reg R. 4.9, 49bis] [PCT Art. 4.2; Reg R. 15]

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 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) [PCT Reg R. 19.1, 19.4]

Effects of the international application International filing = regular national filing International filing date = effective filing date in each designated State = starting point of the international phase = potential priority date (Paris Convention) [PCT Art. 11.4, Paris Conv.] [PCT Art. 11.3, 11.4]

PCT filing with priority claim [PCT Art. 2(xi), 8; Reg R.4.10] PCT filing with priority claim PCT = filing under priority First national or regional filing [months] 12 30 International phase National phases before designated Offices PCT filing without priority claim PCT = first filing or filing outside of priority period [months] 30 International phase

« Priority date » Priority date is: [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.- 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

International publication Entry into national phases V.-B- Search and examination: an overall view International Preliminary Report on Patentability IPRP Chapter I or Chapter II International Search Report Supplementary International Search Report Written opinion 12 16 18 19 22 28 30 PCT Filing International publication Entry into national phases Priority Demand for international preliminary examination Supplementary international search request

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

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; Reg R. 35, 59]

International search and written opinion by International Searching Authority (ISA) International Search Report (ISR) Written opinion by ISA 12 16 18 30 2 months modifications of the claims

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 International Search Report (ISR) citations of relevant documents indication according to the International Patent Classification (IPC) fields on which the search was carried out [PCT Art. 15; Reg R. 33] [PCT Reg R. 34] [PCT Art. 18; Reg R. 43]

Written Opinion by the ISA [PCT Art. 34; Reg R. 43bis] Characteristics preliminary, non binding novelty ? inventive step ? industrial application ? First step of the examination procedure obligatory and unilateral on the basis of the PCT application as filed Relevant date = priority date [PCT Reg R. 43bis]

Applicant’s reply, reaction, next step Amend the claims ? Request international preliminary examination (under Chapter II of the Treaty) ? 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 Art. 19; Reg R. 46] [PCT Art. 31] [PCT Reg R. 44bis]

Supple- mentary international search requested ? Written opinion by ISA Supple- mentary international search requested ? (months) 16 18 19 no 30 28 yes Supplementary International Search Report

Preliminary examination requested ? If international preliminary examination is not requested Written opinion by ISA International Preliminary Report on Patentability (IPRP ch.I) no Preliminary examination requested ? (months) 16 18 19 22 30 NOTE: Supplementary International Search may have been requested or not

Preliminary examination requested ? If international preliminary examination is requested Written opinion by ISA (1rst) Written opinion by IPEA (2nd) Written opinion by IPEA International Preliminary Report on Patentability (IPRP ch.II) Preliminary examination requested ? 22 Demand for international preliminary examination yes 28 30 [preferably with] Amendments or arguments (in response to (2nd) written opinion by IPEA) Amendments or arguments (in response to written opinion by ISA)

International preliminary examination Purpose of examination preliminary non binding opinion novelty ? inventive step ? industrial application ? 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 [PCT Art. 31, 33] [PCT Art. 31; Reg R. 53, 54] [PCT Reg R. 64]

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

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

At the end of the international phase and before entering into the national phase [PCT Art. 18, 35; Reg R. 44bis, 45bis] The applicant has at least: 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.- 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

V.-C- Publication [PCT Art. 21; Reg R. 48] Time limit : shortly after the expiration of 18 months from the priority date Contents 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 [PCT Art. 55.4); Reg R. 48, 86] [PCT Reg R. 48] [PCT Art. 21, 29, 30; Reg R. 33, 34, 94]

A few other questions relating to international publication Electronic form of publication Communication to designated Offices Prevent publication ? Postpone publication ? Advance publication ? Cases where there will be no publication [PCT Reg R. 48] [PCT Art. 20; Reg R. 47] [PCT Reg R. 90bis.1] [PCT Reg R. 90bis.3] [PCT Art. 21.2; Reg R. 48] [PCT A. 11, 14, 24, 64; Reg R. 29, 90bis]

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

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 [PCT Art. 22, 39; Reg R. 49, 76] [PCT Art. 22, 23, 39, 40] [PCT Reg R. 49.6] [PCT Art. 23, 40]

Rejection or abandonment National phase 12 International phase 30 National phases 31 Granted patents No national phase Rejection or abandonment

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 application as published priority document International Search Report International Preliminary Report on Patentability [PCT Art. 20; Reg R. 17.2, 70]

National requirements remaining to be complied with upon entry into national phase Furnishing of proofs of allegations / declarations names, indications, documents Requirement for mandatory representation appointment of a local agent or attorney Substantive conditions of patentability definition of prior art evidence [PCT Art. 27.2, 27.3, 27.4; Reg R.51bis] [PCT Art. 27.7] [PCT Art. 27.5, 27.6]

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

V.-E- Access to the file of the international application Who has access the applicant any person authorized by the applicant third parties 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 [PCT Art. 30, 38; Reg R. 17.2, 94]

Access to the file of the international application by third parties –situation until 30.06.2014 As from 30 months, ACCESS to certain items relating to examination: ISA written opinion, IPRP (Ch.I or Ch.II) IB IB Before international publication: NO ACCESS [months] 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) DO EO National phases: ACCESS according to national law

Access to the file of the international application by third parties – situation as from 01.07.2014 As from 30 months, ACCESS to certain items relating to examination: IPRP (Ch.I or Ch.II) IB IB Before international publication: NO ACCESS [months] 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) DO EO National phases: ACCESS according to national law NOTE: Situation applicable to PCT applications filed on or after 01.07.2014

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

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

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

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

VI.- Conclusion (4) Constant evolution requiring involvement of Contracting States IP offices WIPO all users (applicants, agents, other users) Potential for yet future developments

The end.