1. Introduction to the Patent Cooperation Treaty
PCT for the Global Intellectual Property Academy
Introduction to the Patent Cooperation Treaty
Charles Pearson
Office of PCT Legal Administration
United States Patent and Trademark Office
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

2. Patent Cooperation Treaty
Objectives
To understand the structure and function of the Patent Cooperation Treaty (PCT)
International and National Stages
To understand duties and obligations under the Treaty
IB (International Bureau)
RO (receiving Office)
ISA (International Searching Authority)
SISA (Supplementary International Searching Authority)
IPEA (International Preliminary Examining Authority)
DO/EO (Designated Office/Elected Office)
November 2014
Patent Cooperation Treaty

3. The Patent Cooperation Treaty
A United Nations Treaty
signed June 1970
became operational June 1978
administered by the International Bureau (IB)
of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland
November 2014
Patent Cooperation Treaty

4. Patent Cooperation Treaty
International Patent?
An international application (IA) is filed under the PCT but…
there is no “international patent”
the PCT functions as a patent application filing system
the IA must still be prosecuted
in each national or regional office where patent protection is desired
November 2014
Patent Cooperation Treaty

5. PCT Benefits for Applicants
Simplifies the process of filing foreign applications
one set of formality requirements
establishes a filing date in all PCT Contracting States
Postpones costs
for filing in the national/regional offices
translation fees, filing fees, attorney fees
Provides
an early indication of prior art and
a written opinion as to the novelty, inventive step and industrial applicability of the claimed invention
Gives extra time for assessment of commercial viability in designated States
November 2014
Patent Cooperation Treaty

6. PCT Benefits for Offices
Provides every regional and national patent Office, where protection is sought, the benefit of
an International Search Report (ISR) and
Written Opinion of the International Searching Authority (WOISA)
optionally, a Supplementary International Search Report (SISR)
by a Supplementary International Searching Authority
optionally, an International Preliminary Report on Patentability (Chapter II) – IPRP (CH II)
by an International Preliminary Examining Authority (IPEA)
November 2014
Patent Cooperation Treaty

7. Patent Cooperation Treaty
PCT Contracting State
A country which is a signatory to the PCT
Eighteen (18) Contracting States in 1978
Currently 148 Contracting States
November 2014
Patent Cooperation Treaty

8. PCT Contracting States
LSAC – December 2014

9. PCT World Map (148 Contracting States on 03 August 2013)
November 2014
Patent Cooperation Treaty

10. Legal Secretaries and Administrators Conference
International Applications Filed
In 2013, estimated 205,300 PCT international applications were filed
57,793 filed in US (28.1% of total PCT filings)
Since the inception of the PCT system, over 2.5 million international applications have been filed worldwide
LSAC – December 2014
June 2014, International Patent Legal Administration, USPTO

11. Legal Secretaries and Administrators Conference
Applications Filed at USPTO
In 2014, PCT Filings in RO/US increased 11.5% from 2013
National phase application filing increased 6.4%
LSAC – December 2014
June 2014, International Patent Legal Administration, USPTO

12. The International Application
A single application
filed together with a Request
by a resident/national of a PCT Contracting State
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
Formalities in compliance with the PCT
must be accepted during national phase
November 2014
Patent Cooperation Treaty

13. Paris Convention Filing Timeline12
File
application
locally
File multiple
applications
abroad
(months)
Local patent application filed first
multiple foreign applications filed at 12 months, claiming priority under the Paris Convention
multiple formality requirements
multiple prosecutions of applications
translations and national/regional fees required at 12 months
November 2014
Patent Cooperation Treaty

14. Patent Cooperation Treaty
PCT Filing Timeline
(months) 12 18 30
File first
application
File
International Application
International Publication
Enter
national
phase
Local patent application filed first
single international application filed at 12 months, claiming priority under the Paris Convention
one set of formalities requirements
one international phase prosecution
translations and national/regional fees and prosecution not required until 30 months
November 2014
Patent Cooperation Treaty

15. Patent Cooperation Treaty
Two Phases of the PCT
International phase
Chapter I (mandatory)
Chapter II (optional)
National phase (stage)
November 2014
Patent Cooperation Treaty

16. Patent Cooperation Treaty
Chapter I
November 2014
Patent Cooperation Treaty

17. Chapter I - Filing and Searching
International application is
filed in a receiving Office (RO)
searched by an International Searching Authority (ISA)
Documents issued
International Search Report (Form PCT/ISA/210)
rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203)
Written Opinion of the ISA (Form PCT/ISA/237)
reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373)
optional - Supplementary International Search Report (SISR - Form PCT/SISA/501)
November 2014
Patent Cooperation Treaty

18. Chapter I - Amendment and Publication
Optional amendment to claims only, by applicant
filed directly with the IB under PCT Article 19
complete set of claims
within 2 months of ISR mailing date
Publication of international application by the IB
with ISR and Article 19 amendments, if any
available on IB web site - PATENTSCOPE
November 2014
Patent Cooperation Treaty

19. International Searching Authority (ISA)
Each PCT Contracting State reaches agreement
with one/more ISA(s) to search international applications filed in its receiving Office
Applicants who are U.S. residents or nationals
filing in the RO/US or RO/IB can select as ISA
USPTO
European Patent Office (EPO)
Korean Intellectual Property Office (KIPO)
Australian Patent Office (IPAU)
Russian Federation (Rospatent)
Israel Patent Office (ILPO)
USPTO acts as ISA for international applications filed in certain other receiving Offices
November 2014
Patent Cooperation Treaty

20. International Searching and Preliminary Examining Authorities
PCT for the Global Intellectual Property Academy
International Searching and Preliminary Examining Authorities
AT Austria
AU Australia
BR Brazil
CA Canada
CL Chile
CN China
EG Egypt
EP EPO
ES Spain
UK Ukraine*
SG Singapore*
FI Finland
IL Israel
IN India
JP Japan
KR Republic of Korea
RU Russian Federation
SE Sweden
US United States
XN Nordic Patent Institute
Chile
Egypt has started operations, yes?
*Has not yet commenced operations
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

21. Introduction to the PCT
PCT System
Priority application filed 30 |
Date for calculation of all PCT time limits
(months) | 12 | 16 | 18 | 28 | |
File local (priority)
application
Typically a national patent application in the country of the applicant
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

22. Introduction to the PCT
PCT System – Chapter I
International Application Filed
Where no priority application is filed, the IFD is the date for calculation of all PCT time limits
Chapter I (no Demand filed)
Start of
International
phase 30 |
(months) |
12* | 16 | 18 | 28 | |
File international application
under the PCT |
File local (priority)
application
Typically filed in the same national office
international filing/search fees
one language
one set of formalities
legal effect in all PCT States
*may be more than 12 months where the international application contains a restoration-eligible priority claim
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

23. Introduction to the PCT
PCT System – Chapter I
ISR and WOISA Issued
Chapter I (no Demand filed) 30 |
(months) |
12* | 16 | 18 | 28 | |
File PCT |
International Search Report (ISR) and Written Opinion of ISA (WOISA) |
File local (priority)
application
ISA:
establishes ISR citing relevant prior art (PCT/ISA/210)
rarely, non-establishment of ISR (PCT/ISA/203)
prepares written opinion (PCT/ISA/237)
Time limit is the later of:
3 months after the ISA receives the search copy
9 months after the priority date
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

24. International Search Report
Form PCT/ISA/210
(second sheet)
Documents Considered to be Relevant

25. International Search Report Cited Documents (References)
Document Categories
Document Citations & Relevant Passages
November 2014
Patent Cooperation Treaty

26. Three Main Categories of Prior Art in an ISR
“X” document
Claimed invention lacks
novelty or
inventive step when considered alone
(lacks inventive step = obvious)
“Y” documents
Claimed invention lacks inventive step
when two or more documents are used in combination
“A” document
General state of the art reference
November 2014
Patent Cooperation Treaty

27. Three Additional Categories of Prior Art in an ISR
“P” document
intervening reference
published on or after the priority date but before the IFD
listed as “X,P” or “Y,P” or “A,P”
“O” document
non-written disclosure
published after the IFD
describes earlier oral disclosure
listed as “X,O” or “Y,O” or “A,O”
“E” document
U.S. or foreign patent or patent application published on or after the IFD but having a filing or priority date prior to the IFD
listed as “X,E” or “Y,E” or “A,E”
November 2014
Patent Cooperation Treaty

28. Written Opinion of the ISA Cover Sheet
Form PCT/ISA/237
(cover sheet)
Contents of the WOISA

29. Written Opinion of the ISA Basis of this Opinion
Form PCT/ISA/237
Box No. I
Basis of this opinion
application as filed
translated
rectified
no amendments
in contrast to CH II
November 2014
Patent Cooperation Treaty

30. WOISA Reasoned Statement
Form PCT/ISA/237
Box No. V
Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention

31. Introduction to the PCT
PCT System – Chapter I
Article 19 Amendment Filed
Chapter I (no Demand filed) 30 |
(months) |
12* | 16 | 18 | 28 | |
File PCT |
ISR & WOISA |
File local (priority)
application |
(optional) Article 19 amendment
Filed in the IB
claim amendments only
within 2 months of ISR/WOISA mailing date
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

32. Introduction to the PCT
PCT System – Chapter I
International Application Publication
WIPO publishes IA
example: WO2013/018714
accessible via DERWENT database and WIPO website
Includes ISR and any Article 19 amendments
Chapter I (no Demand filed) 30 |
International
Publication |
(months) |
12* | 16 | 18 | 28 | |
File PCT |
ISR & WOISA |
File local (priority)
application |
Article 19
amendments
(optional)
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

33. Japanese Language IA Published under the PCT
Bibliographic Page
English translation of Abstract
(always present where publication is not in English)

34. Published IA with Article 19 amendment First page of Amended Claims
Stamped as AMENDED SHEET (ARTICLE 19)

35. Introduction to the PCT
PCT System – Chapter I
Supplementary International Search
Chapter I (no Demand filed)
Supplementary International Search Report(s) (SISR) established | 30 |
International
Publication |
(months) |
12* | 16 | 18 | 19 | 28 | |
File PCT |
ISR & WOISA |
(optional)
Supplementary International Search Request |
File local (priority)
application |
Art 19
Filed in the IB
prior to 19 months from priority date
indicates a Supplementary ISA (SISA)
SISA:
establishes SISR citing relevant prior art (PCT/SISA/501)
originally-filed claims searched
no written opinion produced
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

36. Introduction to the PCT
PCT System – Chapter I
IPRP (CH I)
Chapter I (no Demand filed) 30 |
International
Publication |
(months) |
12* | 16 | 18 | 28 | |
File PCT |
ISR & WOISA |
International Preliminary Report on Patentability (Chapter I) |
File local (priority)
application |
Art 19
WIPO prepares an IPRP Chapter I using the WOISA (PCT/IB/373)
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

37. IPRP Chapter I
Form PCT/IB/373 (cover letter for the WOISA)

38. Introduction to the PCT
PCT System
National Phase Entry from Chapter I
Chapter I (no Demand filed)
Enter
national
phase 30 |
International
Publication |
(months) |
12* | 16 | 18 | 28 | |
File PCT |
ISR & WOISA |
File local (priority)
application |
Art 19 |
IPRP (CH I)
Applicant takes steps to pursue patent protection in various States
express intention to enter national phase
pay fees
provide translation
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

39. Patent Cooperation Treaty
Chapter II
November 2014
Patent Cooperation Treaty

40. Chapter II (optional) Preliminary Examination by the IPEA
A Demand is filed with an IPEA
usually accompanied by a response to the WOISA
arguments, and/or
Article 34 amendment to the description, claims, drawings
Documents issued
International Preliminary Report on Patentability (Chapter II) (Form PCT/IPEA/409)
usually the only office action issued by the IPEA
no appeal or further prosecution during international stage once issued
Written Opinion of the IPEA (Form PCT/IPEA/408)
issued only in extraordinary circumstances
November 2014
Patent Cooperation Treaty

41. International Preliminary Examining Authority (IPEA)
Each PCT Contracting State reaches agreement
with one/more IPEA to examine international applications filed in its receiving Office
IPEA/US is a competent IPEA
for international applications filed in RO/US
regardless of which ISA performed the search
IPEA/US may be a competent IPEA for IAs filed
in RO/IB
with some restrictions
in certain other receiving Offices
where ISA/US performed the search
November 2014
Patent Cooperation Treaty

42. Introduction to the PCT
PCT System – Chapter II
Filing of Demand for Chapter II Entry
Chapter I
Chapter II 30 |
International
Publication |
(months) |
12* | 16 | 18 | 22 | 28 | |
File PCT |
ISR & WOISA |
File demand for International preliminary examination |
File local (priority)
application |
Art 19
Time limit is the later of
3 months from mailing of ISR (or 203) and WOISA
22 months after the priority date
Applicant “demands” additional examination/analysis
usually based on an amended application and/or arguments
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

43. Introduction to the PCT
PCT System – Chapter II
IPRP (Chapter II)
Chapter I
Chapter II 30 |
International
Publication |
(months) |
12* | 16 | 18 | 22 | 28 | |
File PCT |
ISR & WOISA |
File local (priority)
application |
Art 19 |
Demand |
International Preliminary Report on Patentability (Chapter II)
International Preliminary Examining Authority (IPEA)
prepares non-binding report on patentability
PCT/IPEA/409 & PCT/IPEA/416
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

44. IPRP (CH II) Cover Sheet
Form PCT/IPEA/409
Contents of the IPRP (CH II)

45. IPRP (CH II) Basis of the Report
Form PCT/IPEA/409
Box No. I
Basis of the report
application as amended
in contrast to WOISA
November 2014
Patent Cooperation Treaty

46. IPRP (CH II) Reasoned Statement
Form PCT/IPEA/409
Box No. V
Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention
November 2014
Patent Cooperation Treaty

47. Introduction to the PCT
PCT System
National Phase Entry from Chapter II
Chapter I
Chapter II
Enter
national
phase 30 |
International
Publication |
(months) | 12 | 16 | 18 | 22 | 28 | |
File PCT |
ISR & WOISA |
File local (priority)
application |
Art 19 |
Demand |
IPRP(CH II)
Applicant takes steps to pursue patent protection in various States
express intention to enter national phase
pay fees
provide translation
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

48. PCT for the Global Intellectual Property Academy
The National Stage
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

49. National Stage Requirements
PCT for the Global Intellectual Property Academy
National Stage Requirements
PCT Articles 22 and 39 require furnishing of the following for national/regional stage entry
a copy of the international application
unless already provided by the International Bureau
a translation of the international application
where appropriate
the national fee
National/Regional Offices may have additional requirements
PCT Applicant’s Guide provides details
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013

50. Patent Cooperation Treaty
35 U.S.C. 371(c) Requirements
Basic national fee
Copy of the IA as filed and an English translation, if applicable
Article 19 amendments, if any, and an English translation, if applicable
Oath/declaration complying with 35 U.S.C. 115 and 37 CFR 1.497
English translation of any annexes to the IPER/IPRP (amendments), if applicable
November 2014
Patent Cooperation Treaty

51. PATENTSCOPE Available Documents
PCT for the Global Intellectual Property Academy
PATENTSCOPE Available Documents
Published international application
IPRP(CH I) – PCT/IB/373 and English translation
WOISA – PCT/ISA/237
and English translation
Priority document
ISR – PCT/ISA/210
November 2014
Office of PCT Legal Administration August 2013

52. PCT for the Global Intellectual Property Academy
Any questions?
November 2014
Patent Cooperation Treaty
Office of PCT Legal Administration August 2013