PATENT CO-OPERATION TREATY - UPDATES SUCHITRA BAI PATENT DEPARTMENT ALTACIT GLOBAL CHENNAI
The Traditional Patent System
PATENT CO-OPERATION TREATY [PCT]
It is an international treaty, administered by the World Intellectual Property Organization (WIPO).
Makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single ‘international’ patent application instead of filing several separate national or regional patent applications.
It is a Patent ‘filing’ system and not a Patent ‘granting’ system.
While the PCT simplifies the patent filing process, the ultimate decision to grant a patent rests exclusively with each national or regional patent Office.
HISTORY OF PCT
The Washington Diplomatic Conference on the Patent Cooperation Treaty took place from May 25 to June 19 , 1970 . The Patent Cooperation Treaty was signed in Washington at the very end of the conference, i.e., on June 19 , 1970 . The Treaty entered into force on January 24 , 1978 initially with 18 Contracting States. The first international applications were filed on June 1 , 1978 . The Treaty was subsequently amended in 1979, and modified in 1984 and 2001. Any Contracting State to the Paris Convention for the Protection of Industrial Property can become a member of the PCT. A majority of the world's countries are signatories to the PCT, including all of the major industrialized countries.
WHEN DID INDIA JOIN THE PCT?
In August, 1998 India joined the Patent Cooperation Treaty (PCT) by acceding to the Paris Convention on Intellectual Property.
The Paris Convention, a treaty more than 100 years old, offers a 12 month grace period for an inventor to file a patent application in other member countries after filing in the home country.
The PCT extends the benefits of the Paris Convention by allowing an inventor to file an "international patent application," which has the effect of filing a separate patent application in each of the PCT member countries designated by the inventor.
The Indian Patent Office has been designated as the receiving office for PCT applications.
THE PCT OFFERS THE FOLLOWING ADVANTAGES
One set of Formality Requirements in one language at one office
International Search [Mandatory] which provides for the Written Opinion of the International Searching Authority International Publication and
International Preliminary Examination Report [Optional]
followed by a National/Regional Phase before Designated Offices within 30/31 months and only if the Applicant wishes to proceed
Postpones major costs and provides additional time to consider various patenting options
Provides a strong basis for patenting decisions
WHERE TO FILE THE INTERNATIONAL APPLICATION
Local or National Patent Office,
Directly with the International Bureau of WIPO,
Regional receiving Office (the ARIPO, the Eurasian Patent Convention, the European Patent Convention or the OAPI)
THE PCT PROCESS IS COMPRISED OF THE FOLLOWING MAIN STEPS :
First Patent Application
(1) Filing of a local patent application
(2) Filing of a PCT application
(3) International search report (ISR) and written opinion
(4) International publication
(5) Optional supplementary international search
(6) Optional international preliminary examination
(7) Processing of the PCT application before national and/or regional patent Offices
THE TIMELINE PROVIDES YOU WITH A GRAPHICAL REPRESENTATION OF THE PCT PROCEDURE AND SEQUENCE
FILING OF A LOCAL (FIRST) PATENT APPLICATION
One or more claims
One or more drawings (where necessary)
Payment of Prescribed fees
FILING OF A PCT APPLICATION
have up to 12 months from the filing date of your local (first) application to file PCT application with the receiving Office.
Minimum Requirements to obtain an International Filing Date
- at least one of the applicants is a resident or national of a PCT Contracting State
- the application must be in a language accepted by the receiving office
- the PCT application contains at least the following elements:
1. an indication that it is intended to be a PCT application
2. the name of at least one applicant
3. a description
4. a claim or claims
INTERNATIONAL SEARCH REPORT (ISR) AND WRITTEN OPINION OF THE ISA
The applicant receives an international search report (ISR) and a written opinion from a national or regional patent Office that has been appointed as an International Searching Authority (ISA) ISR within 16 months from the filing date of the local application
The ISR will contain citations of patent documents and other technological references relevant to the patentability of your invention. The written opinion complements the ISR by providing a preliminary non-binding patentability assessment of your invention taking into consideration the references contained in the ISR.
INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER I)
If a demand is not filed, after having considered the written opinion of the ISA, the WIPO will attach a cover sheet to this written opinion effectively converting it into the international preliminary report on patentability (Chapter I).
(optional) - Filing of a Demand for International Preliminary Examination (Chapter II)
A demand for international preliminary examination is filed with a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA.
It may be filed within 22 months from the priority date of the PCT application.
International Preliminary Report on Patentability (Chapter II)
Within 28 months from the priority date, the IPEA sends an international preliminary report on patentability (Chapter II) containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of the invention. This report is a non-binding opinion on patentability.
ENTRY INTO THE NATIONAL PHASE
It represents the end of the international phase of the PCT procedure and the beginning of the national patent grant procedure.
20 or 30 or 31 months time limit to enter national phase
The international preliminary report on patentability (either under Chapter I or Chapter II), received helps to evaluate the chances of obtaining a patent in the countries of interest.
PCT - UPDATES
On 31 May 2011, Rwanda deposited its instrument of accession to the PCT, and on 31 August 2011, will become bound by the PCT. Consequently, any international application filed on or after 31 August 2011 will automatically include the designation of Rwanda.
Also, because Rwanda will be bound by Chapter II of the PCT, it will automatically be elected in any demand for international preliminary examination filed in respect of an international application filed on or after 31 August 2011. Furthermore, nationals and residents of Rwanda will be entitled, as from 31 August 2011, to file international applications under the PCT.
Totaling to 144 PCT Contracting States.
AMENDMENTS TO THE PCT REGULATIONS AS FROM 1 JULY 2011 JULY 2011
(i) Rectification of obvious mistakes authorized by the International Preliminary Examining Authority under PCT Rule 91.1(b)(iii) (amendments to PCT Rules 48.2 and 70.16);
(ii) Article 19 and 34 amendments and accompanying letters:
a. Translation to be furnished upon National Phase entry must be a translation of the complete set of claims furnished under Rules 46.5 (a) and 66. 8 (c) in replacement of claims as originally filed.
B. IPEA should be provided with the letter indicating the basis in the application as filed for any amendmens made under Article 19 and 34 if applicants want the IPEA to take them into account + translation where required.
AMENDMENTS TO THE PCT REGULATIONS AS FROM 1 JULY 2011
Annexes To The IPRP Chapter Ii Report Shall Contain:
a. Replacement Sheets containing Article 19 and 34 amendments + letters.
b. If letter indicating the basis for the amendments is missing the IPRP Chapter II may be established as if the amendments were not made.
c. Rectifications of obvious mistakes authorized by the IPEA under Rule 91.1 (b) (ii) shall be annexed to the IPRP Chapter II.
PCT Minimum documentation—addition of Chinese patent documents
Force majeure rule (excuse for delay in meeting PCT time limits)
Other minor rule amendments (Rules 17.1(b-bis) and 20.7(b))
Supplementary International Search
PCT Online Services (ePCT)
Availability for license
PCT working group document
Implementation of recommendations to improve the functioning of the PCT, page 21, paragraphs 100-101
System can be implemented by the creation of a new form that applicants can complete with indications that a PCT application is available for license, and optionally, on what terms
Availability for license information to be published and searchable on PATENTSCOPE
In the final stages of consultation with the expectation that such a system will become operational sometime around July 1, 2011
ENTRY INTO FORCE OF THE PCT RULE CHANGES
1 July 2011: Amendments should apply to international applications whose international filing date is on or after 1 July 2011.
1 July 2011: Amendments should apply to international applications in respect of which the applicant has performed the acts under Articles 22 or 39 on or after 1 July 2011 and in respect of which an amendment under Article 19 or 34 was filed on or after 1 July 2009