Introduction to the Patent Cooperation Treaty PCT for the Global Intellectual Property Academy Introduction to the Patent Cooperation Treaty Charles Pearson Office of PCT Legal Administration United States Patent and Trademark Office November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Patent Cooperation Treaty Objectives To understand the structure and function of the Patent Cooperation Treaty (PCT) International and National Stages To understand duties and obligations under the Treaty IB (International Bureau) RO (receiving Office) ISA (International Searching Authority) SISA (Supplementary International Searching Authority) IPEA (International Preliminary Examining Authority) DO/EO (Designated Office/Elected Office) November 2014 Patent Cooperation Treaty

The Patent Cooperation Treaty A United Nations Treaty signed June 1970 became operational June 1978 administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland November 2014 Patent Cooperation Treaty

Patent Cooperation Treaty International Patent? An international application (IA) is filed under the PCT but… there is no “international patent” the PCT functions as a patent application filing system the IA must still be prosecuted in each national or regional office where patent protection is desired November 2014 Patent Cooperation Treaty

PCT Benefits for Applicants Simplifies the process of filing foreign applications one set of formality requirements establishes a filing date in all PCT Contracting States Postpones costs for filing in the national/regional offices translation fees, filing fees, attorney fees Provides an early indication of prior art and a written opinion as to the novelty, inventive step and industrial applicability of the claimed invention Gives extra time for assessment of commercial viability in designated States November 2014 Patent Cooperation Treaty

PCT Benefits for Offices Provides every regional and national patent Office, where protection is sought, the benefit of an International Search Report (ISR) and Written Opinion of the International Searching Authority (WOISA) optionally, a Supplementary International Search Report (SISR) by a Supplementary International Searching Authority optionally, an International Preliminary Report on Patentability (Chapter II) – IPRP (CH II) by an International Preliminary Examining Authority (IPEA) November 2014 Patent Cooperation Treaty

Patent Cooperation Treaty PCT Contracting State A country which is a signatory to the PCT Eighteen (18) Contracting States in 1978 Currently 148 Contracting States November 2014 Patent Cooperation Treaty

PCT Contracting States LSAC – December 2014

PCT World Map (148 Contracting States on 03 August 2013) November 2014 Patent Cooperation Treaty

Legal Secretaries and Administrators Conference International Applications Filed In 2013, estimated 205,300 PCT international applications were filed 57,793 filed in US (28.1% of total PCT filings) Since the inception of the PCT system, over 2.5 million international applications have been filed worldwide LSAC – December 2014 June 2014, International Patent Legal Administration, USPTO

Legal Secretaries and Administrators Conference Applications Filed at USPTO In 2014, PCT Filings in RO/US increased 11.5% from 2013 National phase application filing increased 6.4% LSAC – December 2014 June 2014, International Patent Legal Administration, USPTO

The International Application A single application filed together with a Request by a resident/national of a PCT Contracting State 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 Formalities in compliance with the PCT must be accepted during national phase November 2014 Patent Cooperation Treaty

Paris Convention Filing Timeline 12 File application locally File multiple applications abroad (months) Local patent application filed first multiple foreign applications filed at 12 months, claiming priority under the Paris Convention multiple formality requirements multiple prosecutions of applications translations and national/regional fees required at 12 months November 2014 Patent Cooperation Treaty

Patent Cooperation Treaty PCT Filing Timeline (months) 12 18 30 File first application File International Application International Publication Enter national phase Local patent application filed first single international application filed at 12 months, claiming priority under the Paris Convention one set of formalities requirements one international phase prosecution translations and national/regional fees and prosecution not required until 30 months November 2014 Patent Cooperation Treaty

Patent Cooperation Treaty Two Phases of the PCT International phase Chapter I (mandatory) Chapter II (optional) National phase (stage) November 2014 Patent Cooperation Treaty

Patent Cooperation Treaty Chapter I November 2014 Patent Cooperation Treaty

Chapter I - Filing and Searching International application is filed in a receiving Office (RO) searched by an International Searching Authority (ISA) Documents issued International Search Report (Form PCT/ISA/210) rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203) Written Opinion of the ISA (Form PCT/ISA/237) reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373) optional - Supplementary International Search Report (SISR - Form PCT/SISA/501) November 2014 Patent Cooperation Treaty

Chapter I - Amendment and Publication Optional amendment to claims only, by applicant filed directly with the IB under PCT Article 19 complete set of claims within 2 months of ISR mailing date Publication of international application by the IB with ISR and Article 19 amendments, if any available on IB web site - PATENTSCOPE November 2014 Patent Cooperation Treaty

International Searching Authority (ISA) Each PCT Contracting State reaches agreement with one/more ISA(s) to search international applications filed in its receiving Office Applicants who are U.S. residents or nationals filing in the RO/US or RO/IB can select as ISA USPTO European Patent Office (EPO) Korean Intellectual Property Office (KIPO) Australian Patent Office (IPAU) Russian Federation (Rospatent) Israel Patent Office (ILPO) USPTO acts as ISA for international applications filed in certain other receiving Offices November 2014 Patent Cooperation Treaty

International Searching and Preliminary Examining Authorities PCT for the Global Intellectual Property Academy International Searching and Preliminary Examining Authorities AT Austria AU Australia BR Brazil CA Canada CL Chile CN China EG Egypt EP EPO ES Spain UK Ukraine* SG Singapore* FI Finland IL Israel IN India JP Japan KR Republic of Korea RU Russian Federation SE Sweden US United States XN Nordic Patent Institute Chile Egypt has started operations, yes? *Has not yet commenced operations November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System Priority application filed 30 | Date for calculation of all PCT time limits (months) | 12 | 16 | 18 | 28 | | File local (priority) application Typically a national patent application in the country of the applicant November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System – Chapter I International Application Filed Where no priority application is filed, the IFD is the date for calculation of all PCT time limits Chapter I (no Demand filed) Start of International phase 30 | (months) | 12* | 16 | 18 | 28 | | File international application under the PCT | File local (priority) application Typically filed in the same national office international filing/search fees one language one set of formalities legal effect in all PCT States *may be more than 12 months where the international application contains a restoration-eligible priority claim November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System – Chapter I ISR and WOISA Issued Chapter I (no Demand filed) 30 | (months) | 12* | 16 | 18 | 28 | | File PCT | International Search Report (ISR) and Written Opinion of ISA (WOISA) | File local (priority) application ISA: establishes ISR citing relevant prior art (PCT/ISA/210) rarely, non-establishment of ISR (PCT/ISA/203) prepares written opinion (PCT/ISA/237) Time limit is the later of: 3 months after the ISA receives the search copy 9 months after the priority date November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

International Search Report Form PCT/ISA/210 (second sheet) Documents Considered to be Relevant

International Search Report Cited Documents (References) Document Categories Document Citations & Relevant Passages November 2014 Patent Cooperation Treaty

Three Main Categories of Prior Art in an ISR “X” document Claimed invention lacks novelty or inventive step when considered alone (lacks inventive step = obvious) “Y” documents Claimed invention lacks inventive step when two or more documents are used in combination “A” document General state of the art reference November 2014 Patent Cooperation Treaty

Three Additional Categories of Prior Art in an ISR “P” document intervening reference published on or after the priority date but before the IFD listed as “X,P” or “Y,P” or “A,P” “O” document non-written disclosure published after the IFD describes earlier oral disclosure listed as “X,O” or “Y,O” or “A,O” “E” document U.S. or foreign patent or patent application published on or after the IFD but having a filing or priority date prior to the IFD listed as “X,E” or “Y,E” or “A,E” November 2014 Patent Cooperation Treaty

Written Opinion of the ISA Cover Sheet Form PCT/ISA/237 (cover sheet) Contents of the WOISA

Written Opinion of the ISA Basis of this Opinion Form PCT/ISA/237 Box No. I Basis of this opinion application as filed translated rectified no amendments in contrast to CH II November 2014 Patent Cooperation Treaty

WOISA Reasoned Statement Form PCT/ISA/237 Box No. V Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention

Introduction to the PCT PCT System – Chapter I Article 19 Amendment Filed Chapter I (no Demand filed) 30 | (months) | 12* | 16 | 18 | 28 | | File PCT | ISR & WOISA | File local (priority) application | (optional) Article 19 amendment Filed in the IB claim amendments only within 2 months of ISR/WOISA mailing date November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System – Chapter I International Application Publication WIPO publishes IA example: WO2013/018714 accessible via DERWENT database and WIPO website Includes ISR and any Article 19 amendments Chapter I (no Demand filed) 30 | International Publication | (months) | 12* | 16 | 18 | 28 | | File PCT | ISR & WOISA | File local (priority) application | Article 19 amendments (optional) November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Japanese Language IA Published under the PCT Bibliographic Page English translation of Abstract (always present where publication is not in English)

Published IA with Article 19 amendment First page of Amended Claims Stamped as AMENDED SHEET (ARTICLE 19)

Introduction to the PCT PCT System – Chapter I Supplementary International Search Chapter I (no Demand filed) Supplementary International Search Report(s) (SISR) established | 30 | International Publication | (months) | 12* | 16 | 18 | 19 | 28 | | File PCT | ISR & WOISA | (optional) Supplementary International Search Request | File local (priority) application | Art 19 Filed in the IB prior to 19 months from priority date indicates a Supplementary ISA (SISA) SISA: establishes SISR citing relevant prior art (PCT/SISA/501) originally-filed claims searched no written opinion produced November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System – Chapter I IPRP (CH I) Chapter I (no Demand filed) 30 | International Publication | (months) | 12* | 16 | 18 | 28 | | File PCT | ISR & WOISA | International Preliminary Report on Patentability (Chapter I) | File local (priority) application | Art 19 WIPO prepares an IPRP Chapter I using the WOISA (PCT/IB/373) November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

IPRP Chapter I Form PCT/IB/373 (cover letter for the WOISA)

Introduction to the PCT PCT System National Phase Entry from Chapter I Chapter I (no Demand filed) Enter national phase 30 | International Publication | (months) | 12* | 16 | 18 | 28 | | File PCT | ISR & WOISA | File local (priority) application | Art 19 | IPRP (CH I) Applicant takes steps to pursue patent protection in various States express intention to enter national phase pay fees provide translation November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Patent Cooperation Treaty Chapter II November 2014 Patent Cooperation Treaty

Chapter II (optional) Preliminary Examination by the IPEA A Demand is filed with an IPEA usually accompanied by a response to the WOISA arguments, and/or Article 34 amendment to the description, claims, drawings Documents issued International Preliminary Report on Patentability (Chapter II) (Form PCT/IPEA/409) usually the only office action issued by the IPEA no appeal or further prosecution during international stage once issued Written Opinion of the IPEA (Form PCT/IPEA/408) issued only in extraordinary circumstances November 2014 Patent Cooperation Treaty

International Preliminary Examining Authority (IPEA) Each PCT Contracting State reaches agreement with one/more IPEA to examine international applications filed in its receiving Office IPEA/US is a competent IPEA for international applications filed in RO/US regardless of which ISA performed the search IPEA/US may be a competent IPEA for IAs filed in RO/IB with some restrictions in certain other receiving Offices where ISA/US performed the search November 2014 Patent Cooperation Treaty

Introduction to the PCT PCT System – Chapter II Filing of Demand for Chapter II Entry Chapter I Chapter II 30 | International Publication | (months) | 12* | 16 | 18 | 22 | 28 | | File PCT | ISR & WOISA | File demand for International preliminary examination | File local (priority) application | Art 19 Time limit is the later of 3 months from mailing of ISR (or 203) and WOISA 22 months after the priority date Applicant “demands” additional examination/analysis usually based on an amended application and/or arguments November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Introduction to the PCT PCT System – Chapter II IPRP (Chapter II) Chapter I Chapter II 30 | International Publication | (months) | 12* | 16 | 18 | 22 | 28 | | File PCT | ISR & WOISA | File local (priority) application | Art 19 | Demand | International Preliminary Report on Patentability (Chapter II) International Preliminary Examining Authority (IPEA) prepares non-binding report on patentability PCT/IPEA/409 & PCT/IPEA/416 November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

IPRP (CH II) Cover Sheet Form PCT/IPEA/409 Contents of the IPRP (CH II)

IPRP (CH II) Basis of the Report Form PCT/IPEA/409 Box No. I Basis of the report application as amended in contrast to WOISA November 2014 Patent Cooperation Treaty

IPRP (CH II) Reasoned Statement Form PCT/IPEA/409 Box No. V Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention November 2014 Patent Cooperation Treaty

Introduction to the PCT PCT System National Phase Entry from Chapter II Chapter I Chapter II Enter national phase 30 | International Publication | (months) | 12 | 16 | 18 | 22 | 28 | | File PCT | ISR & WOISA | File local (priority) application | Art 19 | Demand | IPRP(CH II) Applicant takes steps to pursue patent protection in various States express intention to enter national phase pay fees provide translation November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

PCT for the Global Intellectual Property Academy The National Stage November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

National Stage Requirements PCT for the Global Intellectual Property Academy National Stage Requirements PCT Articles 22 and 39 require furnishing of the following for national/regional stage entry a copy of the international application unless already provided by the International Bureau a translation of the international application where appropriate the national fee National/Regional Offices may have additional requirements PCT Applicant’s Guide provides details November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013

Patent Cooperation Treaty 35 U.S.C. 371(c) Requirements Basic national fee Copy of the IA as filed and an English translation, if applicable Article 19 amendments, if any, and an English translation, if applicable Oath/declaration complying with 35 U.S.C. 115 and 37 CFR 1.497 English translation of any annexes to the IPER/IPRP (amendments), if applicable November 2014 Patent Cooperation Treaty

PATENTSCOPE Available Documents PCT for the Global Intellectual Property Academy PATENTSCOPE Available Documents Published international application IPRP(CH I) – PCT/IB/373 and English translation WOISA – PCT/ISA/237 and English translation Priority document ISR – PCT/ISA/210 November 2014 Office of PCT Legal Administration August 2013

PCT for the Global Intellectual Property Academy Any questions? November 2014 Patent Cooperation Treaty Office of PCT Legal Administration August 2013