1. Introduction to the Patent Cooperation Treaty Mike Neas Special Program Examiner Office of PCT Legal Administration U.S. Patent and Trademark Office Conference on Intellectual Property in the Global Marketplace

2. There is no “international patent.” The Patent Cooperation Treaty (PCT) functions as a patent application filing system. The applicant must still prosecute the international application in each national or regional office in order to obtain a patent. Worldwide Patents?

3. Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: –Multiple formality requirements –Multiple searches –Multiple publications –Multiple examinations and prosecutions of applications –Translations and national fees required at 12 months – continued – Traditional Patent Systems

4. 012 File Application Locally File Applications Abroad (Months) Traditional Patent Systems, cont.

5. A United Nations treaty –Signed in June 1970 at the Washington Diplomatic Conference –Became operational in June 1978 –Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland The Patent Cooperation Treaty

6. To simplify the process of filing foreign patent applications To give every regional and national patent office the benefit of a search and a preliminary report on patentability by a major patent office Purposes of the PCT

7. A country which is a signatory to the PCT Eighteen Contracting States in 1978 Currently 126 Contracting States –Comoros became bound by the Treaty on April 3, 2005. –Nigeria became bound by the Treaty on May 8, 2005. –As of September 15, 2005, when Libya becomes bound by the Treaty, 127 Contracting States. PCT Contracting State

8. AP ARIPO Patent EA Eurasian Patent EP European PatentOA OAPI Patent ATAustria s BEBelgium BGBulgaria CHSwitzerland sCYCyprus CZCzech Republic DE Germany DKDenmark EE Estonia ESSpain FIFinland sFRFrance GBUnited Kingdom s GRGreece sHUHungary sIEIreland s ITItaly ISIceland LI Liechtenstein LT Lithuania LULuxembourg LV Latvia sMCMonaco s NLNetherlands PLPoland PT Portugal RO Romania SESweden sSKSlovakia TRTurkey BWBotswana GHGhana GMGambia KEKenya LSLesotho MWMalawi MZMozambique SDSudan SLSierra Leone s SZSwaziland TZUnited Republic of Tanzania UGUganda ZMZambia ZWZimbabwe AMArmenia AZAzerbaijan BYBelarus KGKyrgyzstan KZKazakhstan MDRepublic of Moldova RURussian Federation TJTajikistan TMTurkmenistan s BFBurkina Faso s BJBenin s CFCentral African Republic s CGCongo s CICôte d’Ivoire s CMCameroon s GAGabon s GNGuinea s GQEquatorial Guinea s GWGuinea-Bissau s MLMali s MRMauritania s NENiger s SNSenegal s TDChad s TGTogo Regional Patents States Designated for Regional Protection  Regional patent only

9. AEUnited Arab Emirates AGAntigua and Barbuda AL Albania AUAustralia BABosnia and Herzegovina BBBarbados BRBrazil BZBelize CACanada CNChina COColombia CRCosta Rica CUCuba DMDominica DZAlgeria ECEcuador EGEgypt GDGrenada GEGeorgia HRCroatia NGNigeria NONorway NZNew Zealand OMOman PGPapua New Guinea PHPhilippines SC Seychelles SGSingapore SM San Marino SYSyrian Arab Republic TN Tunisia TTTrinidad and Tobago UAUkraine USUnited States of America UZUzbekistan VCSaint Vincent and the Grenadines VNViet Nam YUSerbia and Montenegro ZASouth Africa IDIndonesia ILIsrael INIndia ISIceland JPJapan KMComoros KPDemocratic People’s Republic of Korea KRRepublic of Korea LCSaint Lucia LKSri Lanka LRLiberia MAMorocco MGMadagascar MKThe former Yugoslav Republic of Macedonia MNMongolia MXMexico NA Namibia NINicaragua National Patents States Designated for National Protection

10. 121,264 Number of International Applications Received

11. Record Copies Received by Country of Origin 42,713

12. To file in up to 126 countries with a single international application To delay the expenses associated with: –Translations –Foreign filing fees –Local associates – continued – Advantages of the PCT

13. Advantages of the PCT, cont. To provide an early indication of pertinent prior art and written opinion as to the novelty, inventive step and industrial applicability of the claimed invention To give extra time for assessment of commercial viability in designated states

14. Local application followed within 12 months by the PCT, claiming priority under the Paris Convention. –One set of formalities requirements –International search –International publication –Optional international preliminary examination –Translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry PCT System

15. File Demand File First Application File PCT International Search Report/ Written Opinion International Publication 012 16 18 International Preliminary Examination (Months) OR 30 20 Enter National Phase Chapter I Chapter II 30 PCT System

16. Text Equivalent for Slide 15 Process StageActivityMonths into Process 1.1 File First Application0 Chapter I1.2 File PCT12 1.3 International Search Report/ Written Opinion16 1.4 International Publication18 1.5 File Applications Abroad >> GO TO 3.0 or >> GO TO 2.1 20 Chapter II2.1 File Demand 2.2 International Preliminary Examination 3.0 Enter National Phase30 PCT System

17. A single application is: –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. Compliance with the form prescribed for the international application must be accepted by all designated States during national stage. The International Application

18. For International Applications Filed with USPTO Competent receiving office for residents and nationals of the U.S. Language of filing: English Number of copies required: One Competent International Searching Authorities (ISAs): USPTO, European Patent Office (EPO)* Competent International Preliminary Examining Authorities (IPEAs): USPTO, EPO (only if EPO was ISA) * EPO will not search applications with claims directed to “business methods.”

19. IPEA/US IPEA/EP RO/US ISA/US ISA/EP Choices for U.S. Nationals and Residents

20. Text Equivalent for Slide 19 1.0 Regional Office – US >> GO TO 2.1 or >> GO TO 3.1 2.1 International Search Authority – US 2.2 International Preliminary Examination Authority – US 3.1 International Search Authority – Europe 3.2 International Preliminary Examination Authority - Europe

21. Filing International Applications in the RO/US Patent attorneys or agents registered to practice before the PTO may represent applicants in international applications. Applicants may choose to represent themselves in international applications. All international applications are screened for compliance with U.S. national security provisions before the record copy is forwarded to the IB. RO/US does not accept filing of international applications by fax.

22. International phase: –Chapter I Designated offices –Chapter II (optional) Elected offices National phase (stage) Two Phases of the PCT

23. International application filed International search performed by the ISA International search report and written opinion of the ISA prepared – continued – Chapter I Proceedings

24. Chapter I Proceedings, cont. Optional amendment to the claims only –Filed with the IB of WIPO under Article 19 after search report mailed International application, search report and Article 19 amendment published by IB –Published pamphlet sent to designated States by IB –Written opinion of the ISA is not published

25. A request: –Form PCT/RO/101, or –Computer-generated request (e.g, PCT-SAFE request). A description of the invention One or more claims One or more drawings where necessary to illustrate the invention An abstract Parts of an International Application

26. Article 11(1) Requirements for According an International Filing Date Applicant has right to file with RO for reasons of residence or nationality (Rules 18 and 19). –Application transmitted to IB as RO under Rule 19.4(a) if applicant is resident or national of PCT Contracting State but not national or regional office where filed. – continued –

27. Article 11(1) Requirements, cont. Application is in a language prescribed by the RO. (Rule 12.1) –Application transmitted to IB as RO under Rule 19.4(b) if not in a language prescribed by the national or regional office where it was submitted. – continued –

28. Application must contain: –An indication that it is intended as an international application filed under the PCT. (Rule 4.2) –A designation of at least one Contracting State. Filing of a request constitutes the designation of all Contracting States bound by the Treaty on the international filing date. –Name of the applicant (Rule 4.5) –A description (Rule 5) –One or more claims (Rule 6) Article 11(1) Requirements, cont.

29. Not Required for Obtaining an International Filing Date Payment of fees Applicant’s signature Title of the invention Abstract Formal drawings

30. Transmittal fee is $300 Search fee: –ISA/US: $300: If there is a corresponding prior U.S. national application under 35 USC 111(a) and the conditions under 37 CFR 1.445(a)(2)(i) are met $1,000: All other situations –ISA/EP is $2,075 – continued – Chapter I Fees

31. International filing fee: –$1,211: For first 30 pages of the international application –$13: For each additional page over 30 Priority document fee is $20. Due within one month of the date of receipt of the international application Chapter I Fees, cont.

32. To formulate a preliminary, non-binding opinion on whether the claimed invention appears. –To be novel –To involve an inventive step (that is, to be non- obvious) –To have industrial applicability Purposes of Chapter II

33. Demand is filed with a competent IPEA. –May include amendments to description, claims and drawings under Article 34 International Preliminary Report on Patentability (Chapter II) is prepared by IPEA and sent to: – Applicant and IB by IPEA – Elected States by IB at 30 months Chapter II Proceedings

34. Handling fee is $173 Preliminary examination fee is: –$600: If USPTO was the ISA –$750: If the USPTO was not the ISA Due within one month from the date of submission of the demand or 22 months from the priority date, whichever expires later. Chapter II Fees

35. Prepare translations of the international application into languages required by the desired patent offices, as applicable. Transmit translation and necessary fees to each desired national or regional patent office previously designated/elected. Details for entry in each contracting state can be found in the PCT Applicant’s Guide. Steps for National Stage Entry

36. Manual of Patent Examining Procedure (MPEP): –Chapter 1800 –Appendix T (PCT and regulations) –Appendix AI (PCT Administrative Instructions) PCT Help Desk: –Phone: 571-272-4300 (new as of July 1, 2005) –Fax: 571-273-0419 – continued – PCT Resources

37. PCT home page on PTO Internet site: –www.uspto.gov/go/pct/ PCT newsletter, PCT Applicant's Guide, etc., available on the Internet: –www.wipo.int/pct/en/index.html GAO Report No. GAO-03-910 (“Experts’ Advice for Small Businesses Seeking Foreign Patents”): –www.gao.gov WIPO’s Small and Medium-Sized Enterprises Division: –www.wipo.int/sme/en/ PCT Resources, cont.

38. Conference on Intellectual Property in the Global Marketplace [presenter’s email address] THANK YOU Introduction to the Patent Cooperation Treaty