PCT FILING - ADVANTAGES© Dr. S. Padmaja, Managing Partner, iProPAT June 21, 2012

Patent Cooperation Treaty June 21, 2012

PCT  Established June 19, 1970  currently 146 countries  filing of single international application  not itself result in the grant of a patent,  India – December 7, 1998 June 21, 2012

Conventional Filing June 21, File applications individually File local application US CA EP AU Months

Conventional Filing  Local patent application followed by individual country applications to claim right of priority  Multiple forms / formality requirements  Filing fee and translation fee at the time of filing  Multiple searches / examinations June 21, 2012

PCT - System  It is only a filing system  It is not a granting system  There is no PCT patent or WO Patent  Only PCT application or a PCT publication June 21, 2012

Conventional vs PCT Filing June 21, File applications individually File local application File local application File PCT application ISR & WO International Publication File demand for IPE IPER Enter National Phase US CA EP AU CA EP AU JP Months

International Application  international publication – An effective means of advertising and looking for potential licensees.  Has the effect of filing in all the designated states as if a national patent application had been filed with the national patent office of that State. June 21, 2012

Minimum requirements  Request with the required fees  Name of the applicant  Inventors  Description  Claims June 21, 2012

Where can the IA be filed  Receiving office  At least one of the applicants has the right to file with the RO  International Bureau June 21, 2012

How can the IA be filed  Using Request form  PCT Easy  Appropriate fee reductions available June 21, 2012

Fees to be paid for filing  Transmittal fee  International filing fee  Additional pages  Searching fee June 21, 2012

Defects that can be corrected  Not a correct Receiving office  If the application is filed in a language not acceptable by the RO  Errors in the nationality and address of the applicant  Missing priority  Missing fees / signatures June 21, 2012

Defects result in change of filing date  Missing sheets  In description  Claims  Drawings June 21, 2012

International Search  Competent ISA  Check unity of invention  16 month  Establishes ISR  Establishes Written Opinion  Classifies the prior art into different categories June 21, 2012

International Preliminary Report  IPRP  File Demand for IPE  Established IPEA  Request can be made at 3 months from ISR or 22 months  Established at the end of 28 th month June 21, 2012

PCT Chapter I and Chapter II June 21, 2012

Advantages of PCT - system  It enables filing of one single application designating all member countries  Filed in one language with one office.  One set of formal documents  Possibility to delay as much as possible the national procedures, and the respective fees and translation costs. June 21, 2012

Advantages of PCT - system  International search report / written opinion  International Publication  International Preliminary Examination  Translations and national fees required only if applicant wishes to proceed.  Provides a strong basis for patenting decisions. June 21, 2012

Thank You