Discover what are the benefits of applying for an international patent as opposed to getting a patent that is only guaranteed locally. Get briefed on the essential patenting criteria for tech products and more.

1. PCT - The International route
Concetta Larcinese & Franck Adkhis
Version: September 2014

2. National vs. PCT-route
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3. National vs. PCT-route
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4. The EPO and the PCT: a long standing relationship
• PCT has always been a big and still growing part of our work.
• Currently 2 out of 5 search files at the EPO are PCT files.
• The EPO globaly treats almost 50% of the International Preliminary
Examination Reports (IPER) in Chapter II, In Chapter I approx. 41%.
• PCT files are treated exactly like EP files, both for quality and level of
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service.
• In 2013 approx. 82000 requests for an International Search Report
(ISR) have been filed.
• EPO is International Search Authority (ISA) for approx. 42% of all PCT
files.
• The EPO has always promoted the PCT and has a strong interest in
continuously improving PCT procedures.

5. Known benefits of the PCT procedure (1/2)
• The 148 contracting parties make the PCT procedure the best way for
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an invention to obtain international protection.
• An applicant files one international application under the PCT, instead
of as many filings or separate applications as there are countries in
which protection is sought.
• Language commonality.
• The international application is filed in a single place, generally the
national Patent Office of the applicant's country.
• The standard form for an international application is accepted by all
designated Offices for the purpose of the national phase.
• Fees can be paid at one time, at one Office in one currency.

6. Known benefits of the PCT procedure (2/2)
• The PCT allows for more time to decide before expanding protection to
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different countries.
• It is consistently reported that a positive International Search Report
and/or a positive International Preliminary Report on patentability,
when issued by the EPO, makes national granting procedures easier.
• There is less duplication of work (provide original drawings, certified
priority copies etc.)
• The International Search Report (ISR), the Written Opinion of the ISA,
the Supplementary International Search Report and the International
Preliminary Report on Patentability, when drafted by the EPO, are a
solid basis for a good judgment on the application.

7. 09/22/14
PCT share in applications at EPO
~17% ~32%
EP
Nat + others
E-PCT bis
PCT
~38%
~12%
PCT + E-PCT: ~55%

8. 09/22/14
EPO is the ISA and IPEA
• Article 152 EPC:
The European Patent Office shall act as an International Searching
Authority and International Preliminary Examining Authority within the
meaning of the PCT, in accordance with an agreement between the
Organisation and the International Bureau of the World Intellectual
Property Organization, for applicants who are residents or
nationals of a State party to this Convention. This agreement may
provide that the European Patent Office shall also act for other
applicants.

9. EPO=ISA (1/3)
• Your PCT application is searched and pre-examined by a highly skilled
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European patent examiner.
• The search is done in three languages in the most complete patent
documentation available worldwide.
• Examiners working together in a narrow specialized field.
• EPO search engine and document Viewer are a world standard used
by many other Offices.
• Automatic machine translation of e.g Asian prior art with Google's ™
translate experience.

10. EPO=ISA (2/3)
• Search report comes together with a detailed opinion on patentability
that is recognised as a first examination action in the subsequent
regional phase at the EPO.
• EPO Searches and Opinions have an acknowledged inherent value,
both as valuable technical/substantive opinion but also as means to
raise venture capital.
• Timely search: WO-ISA available within 9 months (first filing).
• EPO committed to provide ISR + WO-ISA in time for publication at 18
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months.
• Easy entry to the EP grant procedure 31 months after priority date

11. EPO=ISA (3/3)
• No search fee to be paid at the EPO.
• Search examiner of International Search is first examiner in the
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examination procedure.
• Examiners contact applicants for major clarity issues with the aim to
cover the invention for which protection is sought.
• Multiple Quality Checks at different points of the procedure Quality
Management Structures.
• Possibility of participation in the PCT-PPH (Patent Prosecution
Highway).

12. EPO is designated/selected Office
• Reach a potential market of more than 600 milion customers.
• Economically the EU is the first market for the US.
• Entry in the European phase with a positive International search report
and positive Written Opinion allows an easier granting procedure.
• Examination is performed by an Examining division of 3 experienced
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and highly technically qualified examiners.
• Multiple Quality checks on EP examination files.
• EPO is currently finalizing an ISO 9001 Certification process for its
Quality management system (QMS).
• A European patent is acknowledged as a patent with the highest level
of legal certainty provided by patent Offices worldwide.
• For US. applicants the European regional designation under the PCT
is the single most important designation.

13. Recent developments and future developments
• Commitment at highest possible level for meeting the PCT timeliness.
• Equal service levels to PCT applications and EP-direct applicants
throughout the international phase ("One click application" project for
RO=EP).
• Third party observations, written opinion and phone call during
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Chapter II.
• Improved procedures in case of Non-Unity (remove drawbacks for
users of EPO as ISA/IPEA by reviewing Rule 164 EPC ).
• EPO committed to implement pro-business policies all through it's
patent grant procedure and is introducing online services such as "my
application" available 24/7 for applicants.

14. 09/22/14
Specific measures (1/2)
• Active awareness campaign targeting the USA on supporting
innovation and contributing of patents for fostering business growth.
(E.g. Cooperation with CNN).
• CPC, Cooperative Patent Classification of EPO and USPTO coming
into effect on 1 January 2013. Largely inspired by European ECLA
world standard for classification used e.g by CN and KR.

15. Specific measures (2/2)
• More machine translation services via Google™ Translate.
• Machine translations of all EU languages + CN, JP, KR and RU free of
charge for all users exclusively of EPO service on the EPO website.
• Promoting the IP5 cooperation as platform for securing quality in the
patent system and strengthening the PCT (IP5: JPO, SIPO, USPTO,
EPO, KIPO).
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16. 09/22/14
Need more information?
• Visit www.epo.org
• Contact us at www.epo.org/contact
• Follow us on :
www.facebook.com/europeanpatentoffice
twitter.com/EPOorg
www.youtube.com/EPOfilms
www.linkedin.com/company/european-patent-office

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Need more information?
• http://www.wipo.int/pct/en
• http://www.wipo.int/pct/en/training
• http://www.wipo.int/pct/en/faqs
• http://www.wipo.int/export/sites/www/pct/en/seminar