Patents: The PCT at the center of the International Patent System --- South Africa --- February (1 of 60) Patents: The Patent Cooperation Treaty (PCT) at the center of the International Patent System PCT Outreach Activities: South Africa February 5 to 8, 2007 Presentation by Rolando Hernández Vigaud and ‘Nyalleng Pii PCT Global Outreach Division World Intellectual Property Organization (WIPO) Geneva, Switzerland

Patents: The PCT at the center of the International Patent System --- South Africa --- February (2 of 60) This presentation will highlight the following topics : What is a Patent. The PCT - Introduction - conditions of patentability - rights conferred by a patent - role of patent system - how to protect your invention What does the PCT signify: an international treaty in the field of patents the international system for the filing of patent applications the momentum for improving the international patent system a model of international cooperation an open door into a wealth of scientific and technical information An outline of the PCT procedure the international phase the national phase PatentScope or how to access resource materials on PCT and patent matters 4

Patents: The PCT at the center of the International Patent System --- South Africa --- February (3 of 60) What is a patent? *Conditions of patentability New Invention Disclosure of invention Exploitation of patented invention Grant of a patent *Exclusive rights granted to inventors *Limited term of protection

Patents: The PCT at the center of the International Patent System --- South Africa --- February (4 of 60) Conditions of patentability Any inventions which are new, involves an inventive step and are capable of industrial application Sufficient disclosure of inventions in a patent application An applicant who filed/invented first gets a patent [first to file/first to invent]

Patents: The PCT at the center of the International Patent System --- South Africa --- February (5 of 60) New (Novelty) Novelty: The invention does not form part of the prior art prior art = any knowledge made available to the public before the filing date of the relevant patent application Filing date NO NOVELTY Presentation at a conference Publication in a journal Used in public

Patents: The PCT at the center of the International Patent System --- South Africa --- February (6 of 60) Inventive step Having regard to the prior art, an invention is not obvious to a person having ordinary skill in the art on the filing date Examples –obvious combination of features –substitution of a material for analogous use –routine experiment –mere selection of optimal material from known materials

Patents: The PCT at the center of the International Patent System --- South Africa --- February (7 of 60) Industrial applicability (utility) An invention can be made or used in any kind of industry, including agriculture, fishery etc. Example: DNA sequence –Europe specify which protein is produced or what function it performs –US (utility=specific, substantial and credible utility)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (8 of 60) Rights conferred by a patent Right to prevent a third party from exploiting the patented invention –make, sell, use, offer for sale, import for those purposes A third party may obtain a patent owner’s consent to exploit the patented invention –conclude licensing contract –transfer the ownership Not an exclusive right to exploit the invention! Not a right to market the invention!

Patents: The PCT at the center of the International Patent System --- South Africa --- February (9 of 60) Role of patent system -Promote innovation -Technological and economic development Advantages for the business –Return on investment –Vehicle to market inventions (license, assignment) –Increase in negotiation power –Source of technological knowledge –Monitor competitors’ activities Balance between patentee’s rights and public interest

Patents: The PCT at the center of the International Patent System --- South Africa --- February (10 of 60) How to protect your invention abroad? Why do you need a patent abroad? –territoriality –grant and enforcement of patents in its jurisdiction Why do we need international agreements? –non-discrimination –ensure and support the objectives of the patent system (simpler and more transparent procedures, lower costs, ensure the quality of granted patents etc.)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (11 of 60) Filing a patent application abroad National patent system Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC) Patent Cooperation Treaty (PCT) system Regional Patent Office Nat. Pat. Off. Reg. Pat. Off. International phase National Patent Office Nat. Pat. Off. [National phase] Patents - International publication - International search - International preliminary examination

Patents: The PCT at the center of the International Patent System --- South Africa --- February (12 of 60) patent filing (not granting) system for inventions at the center of international legal framework international system of offices and organizations Setting the scene: The PCT

Patents: The PCT at the center of the International Patent System --- South Africa --- February (13 of 60) Introducing the PCT procedure …national phase (month) International phase Priority period Filing of a single “international application” at a single “receiving Office” designating all PCT States Filing of a first application at a national office 12 0 International processing including centralized search, examination and publication …subsequent processing in... added value, improving and facilitating... Patents granted by “designated national and regional Offices 30 =

Patents: The PCT at the center of the International Patent System --- South Africa --- February (14 of 60) Concluded in June countries, 11 IGOs 11 NGOs Started in June countries 500 applications By end 2004 more than one million applications In countries (as on January 16, 2007) 134,000 applications Setting the scene: a few dates and numbers 1

Patents: The PCT at the center of the International Patent System --- South Africa --- February (15 of 60) The intention of the Contracting States as illustrated by selected keywords from the preamble to the Treaty: to make a contribution to the progress of science and technology to perfect the legal protection of inventions to simplify and render more economical the obtaining of protection in several countries to facilitate and accelerate access by the public to technical information contained in documents describing new inventions to foster and accelerate economic development for developing countries 2The PCT: an international treaty in the field of patents

Patents: The PCT at the center of the International Patent System --- South Africa --- February (16 of 60) The main legal instruments of the patent system National phases (month) International phase Priority period Paris Convention for the Protection of Industrial Property PCT Treaty and all the subsidiary PCT legal instruments National and regional legislation applicable in each PCT State Also for one or more of the periods or phases shown: Patent Law Treaty (PLT) Budapest Treaty (deposit of biological material) Strasbourg Arrangement (on international patent classification) Regional patent treaties WTO Membership

Patents: The PCT at the center of the International Patent System --- South Africa --- February (17 of 60) The main PCT legal texts Treaty* Regulations Administrative Instructions (incl. forms, standards, etc) Agreements between ISA/IPEAs and the International Bureau (search and examination) PCT Search and Preliminary Examination Guidelines PCT Receiving Office Guidelines * Containing several chapters, two of which in particular will often be referred to: - Chapter I - All steps except preliminary examination by the IPEA - Chapter II - Only preliminary examination by the IPEA and national phase on that basis

Patents: The PCT at the center of the International Patent System --- South Africa --- February (18 of 60) One centralized international phase for all PCT countries Followed by national examination processes but only in countries of interest Outline of the procedure

Patents: The PCT at the center of the International Patent System --- South Africa --- February (19 of 60) Momentum generated and encouraged by: consistency between all elements rationalization of procedures and approaches cooperation between all interested parties predictability of the system All these are visible in particular through: international standards agreed interpretation of Treaty provisions and subsidiary texts guidelines for processing applications and for search and examination timeline of the international procedure guaranteed availability of detailed information on various legal, procedural and technical aspects The momentum for improving the patent system

Patents: The PCT at the center of the International Patent System --- South Africa --- February (20 of 60) Relatively smooth operation of the system, amidst the challenges posed by the great diversity in: culture of the various countries, in particular, their IP and patent cultures their legal and patent systems the respective official languages in use at the various Offices Extensive consultation processes are aimed at finding a balance throughout the entire system: via sessions of the various bodies and other meetings, electronic forums, informal discussions, etc. It remains essential that the PCT cater for certain peculiarities of national and regional laws and practices, hence its inherent intricacies, e.g.: US law: inventorship and the qualifying applicant JP law: self-designation effect when priority is claimed EPC: “WTO priorities” not recognized until entry into force of EPC 2000 A model of international cooperation

Patents: The PCT at the center of the International Patent System --- South Africa --- February (21 of 60) The main offices and organizations involved National phases (month) International phase Priority period National and regional IP offices National and regional IP Offices as PCT “receiving Offices” and/or “International Searching and Preliminary Examining Authorities” and the International Bureau of WIPO National and regional IP offices as PCT “designated Offices”

Patents: The PCT at the center of the International Patent System --- South Africa --- February (22 of 60) --is one of the following: -the national Office of any Contracting State willing to assume this responsibility for its nationals and residents -the regional Office acting for one or more Contracting States, with their consent -the International Bureau, by decision of the PCT Union Assembly --specifies: -the international authority(ies) competent to carry out search and examination in relation to PCT applications filed with it -the language(s) in which PCT applications may be filed with it --checks: -whether it is competent -the documents constituting, and those accompanying, the application -whether fees are paid -whether certain time limits are complied with --receives and directs correspondence from the applicant to offices and authorities --collects fees and transfers some of them to the ISA and the International Bureau Sharing PCT responsibilities -- the receiving Office

Patents: The PCT at the center of the International Patent System --- South Africa --- February (23 of 60) --each ISA/IPEA is a qualified office appointed by the PCT Assembly, taking into account the requisites set out in the Regulations, and may be: -the national Office of any Contracting State willing to assume this responsibility -the regional Office acting for one or more Contracting States -or another kind of an intergovernmental organization [as ISA]-discovers the relevant prior art -establishes the international search report -produces a first written opinion on the patentability of the invention -in certain cases, carries out “international-type searches” with respect to national applications filed with certain Contracting States [as IPEA]-produces a (second) written opinion on the patentability of the invention -examines amendments made to the application or arguments presented by the applicant -establishes the international preliminary report on patentability Sharing PCT responsibilities -- International Searching and Preliminary Examining Authority

Patents: The PCT at the center of the International Patent System --- South Africa --- February (24 of 60) --acts as “Secretariat” of the PCT Union Assembly and other PCT bodies --constitutes the framework for the general coordination of the PCT system amongst all PCT offices and authorities --offers assistance to (current and potential) Contracting States and their Offices, -e.g., advice as to implementation of the PCT in the national law --offers assistance to users of the system -e.g., guides, training courses, infoline --maintains and publishes all PCT legal texts (Treaty and subsidiary texts) --is the only receiving Office competent for all applicants, regardless of their nationality or residence --translates into English various parts of the application of a technical nature --publishes all PCT applications and the PCT Gazette --retains, for 30 years, the only legally binding copy of the PCT application Sharing PCT responsibilities -- the International Bureau of WIPO

Patents: The PCT at the center of the International Patent System --- South Africa --- February (25 of 60) Outline of the PCT procedure …national/regional phase (month) International phase Priority period Filing of a single “international application” at a single “receiving Office” designating all PCT States Filing of a first application at a national office 12 0 International processing including centralized search, examination and publication …subsequent processing in... added value, improving and facilitating... = Patents grants by “designated “ national and regional Offices 30 3

Patents: The PCT at the center of the International Patent System --- South Africa --- February (26 of 60) 4 steps step 1filing step 2search and first examination opinion based on patentability criteria step 3publication (optional)step 4 further examination based on patentability criteria (applicant may intervene) The international phase

Patents: The PCT at the center of the International Patent System --- South Africa --- February (27 of 60) Requires one applicant having a link with the PCT nationality or residence one application application request form description drawings claims abstracts Step 1—filing

Patents: The PCT at the center of the International Patent System --- South Africa --- February (28 of 60) one filing one language equates actual national filing in each PCT country Step 1—filing

Patents: The PCT at the center of the International Patent System --- South Africa --- February (29 of 60) one set of fees one agent for international phase one centralized submission of other documents Step 1—filing

Patents: The PCT at the center of the International Patent System --- South Africa --- February (30 of 60) Filing of the PCT application --filing a patent application under the PCT guarantees the applicant -an international filing date -which is immediately effective in all PCT Contracting States -including recognition of priority rights claimed according to the Paris Convention -provided: -the applicant has a link with at least one PCT Contracting State (through nationality or residence) -the application fulfills a few minimum requirements (as to form and contents) --depending on the selected office*, such filing may even be made: -at any time of day, any day of the year -in any language -without any signature, appointed agent, or payment -in paper or fully or partly electronic form [* for example, the International Bureau of WIPO]

Patents: The PCT at the center of the International Patent System --- South Africa --- February (31 of 60) A few minimum requirements must be met: --with respect to nationality or residence: -at least one of the applicants (natural person or legal entity) must be -either a national -or a resident of a PCT Contracting State -- with respect to the minimum contents of the international application: -a description -at least one claim -the name of the applicant whose indication of nationality or residence determines the link with a Contracting State -an indication that the application is filed under the PCT (“petition”) [the filing will constitute the designation of all PCT Contracting States] --fees are not necessary to obtain an international filing date but must be paid in time or the application will be considered withdrawn The international filing date

Patents: The PCT at the center of the International Patent System --- South Africa --- February (32 of 60) --from the international filing date, the international application has : -the effect of a “regular national filing” within the meaning of the Paris Convention -in each designated State --in other words : -the international filing date is considered to be the “actual” filing date in each designated State --in addition, and to the extent the international application itself contains new matter, the priority of the international application may be claimed in a subsequent (national, regional or international) application in respect of such new matter Effects of the international application

Patents: The PCT at the center of the International Patent System --- South Africa --- February (33 of 60) Search by one office relevant prior art PCT definition results in international search report …Outline of the procedure... … the international phase Step 2—search and first examination opinion

Patents: The PCT at the center of the International Patent System --- South Africa --- February (34 of 60) First examination opinion by one office (same as for search) opinion on patentability criteria will later be transformed into international preliminary report on patentability unless applicant requests optional examination …Outline of the procedure... … the international phase Step 2—search and first examination opinion

Patents: The PCT at the center of the International Patent System --- South Africa --- February (35 of 60) by WIPO in one of eight publication languages full text in electronic and paper forms available via Patentscope site at with PCT file inspection available via …Outline of the procedure... … the international phase Step 3—publication

Patents: The PCT at the center of the International Patent System --- South Africa --- February (36 of 60) --it is effected -by the International Bureau -promptly after the expiration of 18 months from the priority date -in two main formats: full text of applications (“pamphlets”) and gazette -each in two media: electronic and paper* -in one of the PCT publication languages (Arabic, Chinese, English, French, German, Japanese, Russian, Spanish) *As from April 1, 2006, the only legal publication is the electronic version on request International publication -- main features and effects (1)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (37 of 60) --its date constitutes the date on which the PCT application becomes part of the prior art --it has the effect of a national publication in each of the designated States -with a few exceptions --it may take place earlier, upon the express request of the applicant International publication -- main features and effects (2)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (38 of 60) …Outline of the procedure... … the international phase Step 4—Optional examination by one office (often same as for search) second opinion on patentability if based on applicant’s amendments and/or arguments otherwise, usually same opinion as that issued with search report results in international preliminary report on patentability

Patents: The PCT at the center of the International Patent System --- South Africa --- February (39 of 60) …Outline of the procedure... … the international phase Results of the international phase publication of full application international search report international preliminary report on patentability Basis for national phase entry decision and process

Patents: The PCT at the center of the International Patent System --- South Africa --- February (40 of 60) The national phase …national/regional phases (month) International phase Priority period 12 0 International processing including centralized search, examination and publication …subsequent processing in... added value, improving and facilitating... = 30 Patents granted by “designated “ national and regional Offices

Patents: The PCT at the center of the International Patent System --- South Africa --- February (41 of 60) must be entered by the applicant before each designated Office before the end of the international phase but only if patent protection still desired …Outline of the procedure... … the national phase

Patents: The PCT at the center of the International Patent System --- South Africa --- February (42 of 60) --only relevant in (or for) PCT States where the applicant still wants to obtain national (or regional) patents -- for each designated Office at the express request of the applicant, together with: -translation of the international application -and payment of the national fee --within the time limit of 30 months from the priority date (with a few exceptions in particular time limit of 31 months, and, in very rare cases time limit of 20 months) National phase before designated Offices

Patents: The PCT at the center of the International Patent System --- South Africa --- February (43 of 60) Depending on national office, will proceed on basis of only PCT reports (search and examination) or PCT reports and national examination or national examination only Will end with grant of patent or rejection or abandonment …Outline of the procedure... … the national phase

Patents: The PCT at the center of the International Patent System --- South Africa --- February (44 of 60) --time limit for compliance with national phase requirements -the Office cannot impose any obligation to comply with its requirements before the expiration of 30 months from the priority date --form and contents of the international application -the Office can apply any requirements which are more favorable to applicants than those fixed in the Treaty and Regulations -the Office cannot apply requirements which are different from or add to the latter --allegations or declarations contained in the application -the Office can require evidence but only after national processing has commenced --qualifying as applicant according to the national law -the Office of the designated State concerned can reject the application if the applicant is not the inventor (with respect to the US) What designated Offices may or may not require: general principles (1)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (45 of 60) --representation of the applicant for the purposes of national processing -the requirement of mandatory representation is permitted, but only once national processing has started --substantive conditions of patentability -any criteria or other conditions of the national law are permitted in particular with respect to definition of prior art -the requirement to submit evidence is permitted --preservation of the national security of the country -all measures that the country concerned considers necessary are permitted --protection of the general economic interests of the country -all measures that the country concerned wishes to take are permitted, including those aimed at limiting the rights of its nationals or residents to file international applications What designated Offices may or may not require : general principles (2)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (46 of 60) What is PatentScope ? PatentScope is –Access to WIPO’s Patent and PCT resources in one place –Access to the technical information contained in more than one million international patent applications –The platform for online electronic publication of PCT international applications –More information on emerging issues, patent data, patent information and statistics

Patents: The PCT at the center of the International Patent System --- South Africa --- February (47 of 60) PatentScope - Overview of Content Patent Cooperation Treaty (PCT) –Legal, technical and general information about the international patent filing system (PCT) including electronic filing. Patent Data –More than 1 million international patent applications available for search, detailed enquiries and as data subscription services Patent Statistics –Monthly statistical reports on PCT –Annual reports on world-wide patenting activity, data query facility. Patent Services –Search reports, access to patent documentation

Patents: The PCT at the center of the International Patent System --- South Africa --- February (48 of 60) PatentScope - Overview of Content Patent Information –Tutorials, Frequently Asked Questions Current Issues –Numerous links to web sites, articles and studies on topical issues such as genetic resources, traditional knowledge, software, business methods, etc. Patent Law –International Treaties administered by WIPO –Links to intellectual property laws of nearly 100 member states Frequently Asked Questions Meetings, Seminars, Training updates

Patents: The PCT at the center of the International Patent System --- South Africa --- February (49 of 60) PCT Resources PCT Background Legal Information Guides, instructions, forms Meetings, Training, Documents

Patents: The PCT at the center of the International Patent System --- South Africa --- February (50 of 60) PCT Resources - Gallery of Inventions 20 (and growing) notable inventions that have been patented via the PCT system

Patents: The PCT at the center of the International Patent System --- South Africa --- February (51 of 60) Information on Patents Current and emerging issues in the patent system –Background information –Studies, articles –Links to related resources

Patents: The PCT at the center of the International Patent System --- South Africa --- February (52 of 60) WIPO’s Patent Information Services State of the Art Search Reports Search and examination –of patent applications filed with Industrial Property Offices participating in the International Cooperation for the Search and Examination of Inventions programme (ICSEI). Information services –Equivalent patent documents (patent family reports). Patent Documents –Delivery of copies of individual patent documents.

Patents: The PCT at the center of the International Patent System --- South Africa --- February (53 of 60) Patent Statistics Monthly reports of PCT filing trends PCT national phase entry statistics Data Query (export data in Excel format based on user- defined criteria) Patent statistics from 1883 to the present day

Patents: The PCT at the center of the International Patent System --- South Africa --- February (54 of 60) Search International Applications PatentScope Search gives access to the complete collection of published PCT international applications (more than one million) Search using –keywords –boolean operators (AND, OR) –field codes (applicant name, publication date, etc)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (55 of 60) View the latest bibliographic data on record at the International Bureau including changes since publication View full text of description and claims for latin-language applications View National Phase Information where available View publication Notices Bibliographic Data

Patents: The PCT at the center of the International Patent System --- South Africa --- February (56 of 60) Access to the documents contained in the file of the International Bureau –Publications –Priority Documents –Declarations (e.g. of inventorship) –Written Opinions, Examination Reports and related documents View or download the documents in different formats –PDF –XML –HTML Documents

Patents: The PCT at the center of the International Patent System --- South Africa --- February (57 of 60) New Features in 2006 RSS feeds –Automatic notification of new search results every publication week. National Phase notifications, with hyperlinks –More than 1M national phase notifications from 24 patent offices. –Hyperlinks to Australia, Canada, Rep. of Korea. Highlighted terms and distribution maps –Quickly find search terms in the description and claims. Choose text sources to search –Front page only or front page and full text. Weekly FTP delivery –The complete weekly publication is now available to subscribers for FTP download (test phase)

Patents: The PCT at the center of the International Patent System --- South Africa --- February (58 of 60) Future plans More data and documents online –PCT National Phase notifications from the ‘missing’ offices –Full-text for the complete collection (latin languages) –PCT forms (especially IB/306 - notification of changes to the applicant and related changes) Tutorials More statistics –including country profiles and country-level indicators Rework and modernisation of electronic products

Patents: The PCT at the center of the International Patent System --- South Africa --- February (59 of 60)...Public access to PCT and patent information... Main PCT legal texts Treaty and Regulations Administrative Instructions Legal notices in the PCT Gazette WIPO Standards authentic versions in English and French for some texts also in official translations in Chinese, German, Italian, Japanese, Portuguese, Russian, Spanish, etc.

Patents: The PCT at the center of the International Patent System --- South Africa --- February (60 of 60) Thank you for your attention very much Rolando Hernández Vigaud Senior Program Officer PCT Global Outreach WIPO tel.: fax: ‘Nyalleng Pii Senior Program Officer PCT Global Outreach WIPO tel.: fax: