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THE PATENT COOPERATION TREATY (PCT) Practical Considerations in Managing PCT Applications Geneva, November 26, 2008.

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Presentation on theme: "THE PATENT COOPERATION TREATY (PCT) Practical Considerations in Managing PCT Applications Geneva, November 26, 2008."— Presentation transcript:

1 THE PATENT COOPERATION TREATY (PCT) Practical Considerations in Managing PCT Applications Geneva, November 26, 2008

2 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

3 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

4 International Preliminary Examining Authorities (IPEA) International Searching Authorities (ISA) Inventions Receiving Offices (national, regional or international) are filed with PCT International Applications are the objects of International Bureau transmit applications to transmit Reports 2 to publishes PCT International Applications communicates to Designated Offices 3 (national and/or regional patent Offices) grant 12Months from Priority Date 1 Applications filed with Patent Offices 1 (Priority Date) PCT International Applications filed with Receiving Offices (International Filing Date) Transmittals of ISR & Written Opinions Publications of PCT International Applications Applicants demand IPRP II (optional) Transmittals of IPRP II (optional) PCT National Phase Entries (where applicants seek protection) International Phase National Phase and/or regional phase Patents 1 Generally, applicants first file a national or regional patent application with their patent Office, and within 12 months from priority date, file a PCT international application at a receiving Office. 2 ISAs transmit International Search Reports (ISRs) & the Written Opinions / IPEAs transmit International Preliminary Reports on Patentability II (IPRP II). 3 Called Elected Offices for Applicants having filed a demand for IPRP II.

5 TIME LIMITS Times limits which must absolutely be monitored ONLY TWO critical events at 12 months:filing a international application under the PCT or not at 30 months:enter into national phases or not, and if yes, into which ones EXCEPTIONALLY, two other critical events at 18 months:let publish or not at 22 months:request examination under Chapter II or not

6 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

7 CHOICE OF OFFICES AND ADMINISTRATIONS (1) Receiving Office (RO): –the national Office of the contracting State of which the applicant (or one of the applicants) is a national or resident, or –where applicable, an Office acting for a Contracting State of which the applicant (or one of the applicants) is a national or resident [regional Offices: EP – EA – ARIPO – OAPI], or –the International Bureau of WIPO (RO/IB)

8 CHOICE OF OFFICES AND ADMINISTRATIONS (2) International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) –the competent ISA(s)/IPEA(s) is (are) specified by the RO –more than one ISA/IPEA may be specified by the RO in making his choice, the applicant must take into account –the language accepted by the ISA/IPEA –that some IPEA(s) accept only IAs which have been searched by certain ISAs

9 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

10 CHOICE OF LANGUAGE OF FILING Language of filing = Language used for description and claims –depending on the receiving Office (RO) used, the applicant may have the choice between several languages of filing e.g.:RO/CH: English, French or German RO/SD: English RO/AP: English –If IA not filed in a language accepted by RO IA transmitted by non-competent RO to the receiving Office of the International Bureau (RO/IB) which accepts any language –Translation will be required if language of filing is not a language of publication a language of search

11 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

12 DESIGNATION OF AN AGENT OR A COMMON REPRESENTATIVE (1) The designation of an agent (who will act on behalf of the applicant(s)) is not mandatory under the PCT, however, the use of the services of an experienced patent attorney is highly recommended Who can act as agent? –any person who has the right to practice before the RO –such person automatically has the right to practice before the IB, the ISA and the IPEA

13 DESIGNATION OF AN AGENT OR A COMMON REPRESENTATIVE (2) What is a common representative? one of the applicants, who is entitled to file an IA, and who is appointed by all the other applicants Where neither a common agent nor a common representative has been appointed, the first named applicant in the request who is entitled to file an IA with the RO with which the IA was filed is automatically « deemed » to be the common representative

14 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

15 COMPARISON of CERTAIN FILING OPTIONS FOR TWO CO-APPLICANTS SD and US LANGUAGE OF FILING ISAIPEAAGENTCRP DEEMED CRP RO/AP ENG ATAT/EP/SE APSD EPAT/EP/SE SEAT/EP/SE RO/SD ENGEP SDSD/USSD RO/US ENG EPEP/KR/US USUS/SDUS KRKR/US USKR/US RO/IB Any (a translation may be required) ATAT/EP/SE AP, SD and/or US SD or US EPAT/EP/KR/SE/US KRKR/US SEAT/EP/SE USKR/US

16 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

17 FEES (1) Overview Filing Transmittal FeeRO* International Filing FeeIB Search FeeISA Preliminary Examination Preliminary Examination FeeIPEA* Handling FeeIB National Phases National Fee DO/EO* National Fee DO/EO* National Fee DO/EO* * Office responsible for collecting the fees

18 FEES (2)Time limits for payment of fees to RO PCT filing fees* are due within one month from the date of receipt of the IA * transmittal fee, international filing fee (if any, + suppl.) and search fee Safeguard: Rule 16bis (one additional month, but with charges) Applicable amount: amount payable on day of receipt of IA All PCT filing fees are payable to the RO Reductions for applicants from Sudan (under certain conditions): –no transmittal fee if IA filed with RO/IB –international filing fee: 90% –EPO search fee : 75% Refund of IFF and Search fee possible under certain conditions

19 FEES (3)Time limits for payment of fees to IPEA PCT examination fees* are due within either of the following time limits which expires later: –one month from the date of receipt of the request for examination, or –22 months from the priority date * Examination fee and handling fee Safeguard: Rule 58bis (one additional month, but with charges) Applicable amount: amount payable on day of receipt of request for examination All PCT examination fees are payable to the IPEA Reductions for applicants from Sudan (under certain conditions): –EPO examination fee: 75% –handling fee: 90% Refund of examination and handling fees possible under certain conditions

20 Comparison of PCT filing costs** for SD applicant, depending on RO and ISA chosen Transmittal Fee (USD) International Filing Fee (USD) Supplement to IFF (USD) Search Fee (USD) RO/AP50 1,338 or * 15 or 1.50* AT: 314 EP: 2,665 or * SE: 2,665 RO/IB None* or 101 RO/SD (eq of 50 SDP) EP: 2,665 or * * If reduction applies ** Amounts applicable on October 1, 2008

21 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

22 PREPARATION/PRESENTATION of a PCT APPLICATION Elements making up the IA Modes of filing Minimum requirements for obtaining an international filing date (IFD) Physical requirements Translation Accompanying documents

23 Elements Making Up The IA Request (Form PCT/RO/101) Description One or more claims Abstract and, where applicable –drawings –sequence listing part of description –indications containing references to biological material

24 Different Modes Of Filing Entirely in paper form In paper/electronic mixed-mode* module PCT-EASY:all elements on paper and, in addition, request form and abstract on a physical medium Entirely in electronic form* PCT-SAFE on line on CD or DVD on diskette * Filing fees are reduced; conditions and availability to be checked with the RO

25 Minimum requirements for obtaining an international filing date (IFD) At least, one of the applicants must have the right to file with the RO* The IA must be in a language accepted by the RO* The IA must contain at least: –an indication that it is intended as an IA –a request which has the effect of making all possible designations –the name of the applicant –a description –a claim * Safeguards:RO/IB is competent for nationals and residents of any PCT contracting State and accepts any language of filing

26 Physical requirements Some examples: –format, margins, size of the characters –special conditions for the drawings Recommendations: –physical requirements to be respected in one go, preferably on filing in order to avoid the filing of corrections later on –international publication of good quality, easily legible in patent documents databases

27 Translation Where the IA is filed in a language which is not accepted by the ISA that is to carry out the international search, the applicant is required: –to furnish to the RO –within one month* from the date of receipt of the IA –a translation of the IA into a language which is both: a language accepted by the ISA that is to carry out the search, and a language of publication * Safeguard: extension of time limit possible (with late furnishing fee)

28 Accompanying documents Priority Document: copy of previous application whose priority is claimed in the IA and which is certified by the Office with which that application was filed Power of attorney document signed by the applicant authorizing his agentto act on his behalf Payment modes and particulars of payment to be checked directly with the RO All these documents/papers should preferably be filed at the same time as the IA; however, they may also be submitted to the RO and/or IB, under certain conditions, after filing.

29 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

30 AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (1) Amendments of the claims under Article 19 –one opportunity to amend the claims only after receipt of the ISR and written opinion of the ISA (WOSA) –must be filed within two months from the date of transmittal of the ISR and WOSA –filed directly with the IB –generally used to better define provisional protection, where available –published as part of the international application at 18 months, in addition to the claims as originally filed

31 AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (2) Amendment of the international application under Article 34 –all parts of the IA may be amended in connection with the international preliminary examination under Chapter II –should be filed together with the demand for international preliminary examination so that examination will be based on the application as amended

32 AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (3) Amendments upon entry into the national phase –all parts of the international application may be amended –time limit is normally at least one month from the date of fulfillment of the requirements for entry into the national phase –any later time limit under the national law apply –any claims fee due for the national phase will be calculated on the basis of the number of claims valid at the time of entry into the national phase

33 AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (4) Mains types of defects: –defects which prevent the according of the international filing date (IFD) e.g., no applicant from a PCT contracting State –defects which, if corrected, will result in a change of the IFD e.g., later submitted sheets –defects which cannot affect the IFD but require a correction by the applicant e.g., fees not (totally) paid do not require a correction by the applicant e.g., ex officio correction by the RO

34 AMENDMENTS, CORRECTIONS, RECTIFICATIONS, CHANGES AND WITHDRAWALS (5) Incorporation by reference of missing elements or missing parts* Correction and addition of priority claims Restoration of the right of priority* Rectification of obvious mistakes Recording of changes Withdrawals Declarations of incompatibility with the national law (reservations) were made by a number of ROs and DOs. See WIPO website at

35 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

36 INTERNATIONAL PUBLICATION (1) Promptly after 18 months from priority date, on the Internet Publication languages: Arabic, Chinese, English, French, German, Japanese, Russian or Spanish ( : + Korean and Portuguese) Contents:front page with bibliographic data and abstract description, claims and drawings, if any international search report +Gazette:lists each of the published IAs contains: bibliographic data, abstract and drawing, if any

37 INTERNATIONAL PUBLICATION (2) Frequency:every Thursday if Thursday is not open for official business: possibly, but not always, the preceding Wednesday Technical preparations: Normally completed 15 calendar days before the actual publication date Preventing publication: by withdrawing the IA Postponing publication: by withdrawing the (earliest) priority date Early publication: upon express request by applicant (subject to a special fee if ISR not yet available)

38 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

39 INTERNATIONAL PRELIMINARY EXAMINATION (1) Option only: where the applicant wishes to continue with the International Preliminary Examining Authority (IPEA) the substantive examination procedure, beyond the examination already done by the ISA Purpose: provides a (second) preliminary non-binding opinion on –novelty (not anticipated) –inventive step (not obvious) –industrial applicability Time limit: 22 months from the priority date or 3 months from the date of transmission of the ISR WOSA, whichever time limit expires later Where? directly with the competent IPEA

40 INTERNATIONAL PRELIMINARY EXAMINATION (2) Fees due:preliminary examination fee handling fee Both fees are collected by IPEA Elements which constitute a Demand for preliminary examination: Demand (Form PCT/IPEA/401) If any, amendments to the international application IPRP (Chapter II) established at whichever of the following time limits which expires later: 28 months from the priority date 6 months from the start date of examination or translation

41 MAIN PRACTICAL CONSIDERATIONS –Time limits –Choice of Offices and Administrations –Language of filing –Designation of agent or common representative –Comparison between certain filing options –Fees –Preparation / Presentation of IA –Amendments, corrections, rectifications, changes and withdrawals –International publication –Optional demand for preliminary examination –Entry into national phases

42 ENTRY INTO THE NATIONAL PHASE (1) Decisions to be taken by the applicant –Whether proceed with or drop the IA ? –When ? At the end of 30 months (when applicable, 31 months or more) –Under Chapter I ? –Under Chapter II ? Early entry ? –Where ? Which national Offices ? Which regional Offices ?

43 ENTRY INTO THE NATIONAL PHASE (2) Acts to be performed by applicant –express request to enter into the national phase –if any, file a translation in the official language of the national Office –pay the national fees A few tips: –time limits for entering national phase apply irrespective of delays in the international phase –make necessary indications that applicant is entering the national phase, i.e., that it is not a direct filing –translation of the IA must be correct and complete (no subject matter may be added and /or deleted) –pay the required fee (amount may be different from that applicable to direct national filing)

44 Thank you very much for your attention. Jean-Luc Baron Head, PCT Offices Services Section Tel.: Fax:


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