1. 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
By: Isabelle BOUTILLON
Adjunct Professor, CEIPI

2. 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

3. 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

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

5. 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]

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

7. II.- A few important dates
Conclusion of the Treaty: June 1970
Entry into force: January 1978
Start of operations: June 1, 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

8. 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

9. 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

10. 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]

11. 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]

12. 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]

13. 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

14. 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]

15. 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

16. 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]

17. 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

18. 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

19. 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

20. 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) * *

21. 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

22. 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

23. 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

24. 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) ?

25. 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

26. 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 ]
[PCT Art. 10; Reg R. 19]

27. 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

28. 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]

29. 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]

30. 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]

31. 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

32. « 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

33. 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

34. 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

35. 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

36. 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]

37. 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

38. 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]

39. 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]

40. 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]

41. 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

42. 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

43. 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)

44. 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]

45. 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

46. 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

47. 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

48. 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

49. 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]

50. 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]

51. 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

52. 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]

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

54. 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]

55. 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]

56. 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

57. 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]

58. 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

59. 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

60. 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

61. 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

62. 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

63. 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

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

65. The end.