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Introduction to the Patent Cooperation Treaty (PCT)

Learn about the PCT and its importance in obtaining international patent protection. Discover the routes to file a patent application and the limitations of the PCT system.

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Introduction to the Patent Cooperation Treaty (PCT)

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  1. WELCOME TO ALL PARTICIPANTS BY A.T.PATRE. ASSTT. CONTROLLER OF PATENTS & DESIGNS PATENT OFFICE, MUMBAI.

  2. INTRODUCTION TO THE PATENT COOPERATION TREATY (PCT)

  3. IMPORTANT TO KNOW • PATENT A TERRITORIAL RIGHT: Patent right is enforceable only in the country of issue. • DESIGNATION: Selection of the Country in PCT request form where the applicant want to obtain the Patent • ELECTION: Selection of the Country out of designated countries in PCT prelim. examn. form request form where the applicant want to obtain the Patent • SEARCH: An important part of the Patent application examn. to check whether the invention is novel or not. • PRIORITY DATE: the date of disclosure of the invetion, the protection for invention starts from P.D. • INT. FILING DATE: the date of filing an international application & it is the priority date for the invention & also the date of Patent for the designated countries

  4. ROUTES TO FILE A PATENT APPLICATION • TRADITIONAL ROUTE • THE PATENT COOPERATION TREATY ROUTE

  5. TRADITIONAL PATENT SYSTEMS Months 0 12 File Applications Abroad File Application Locally

  6. FOR APPLICANTS:Expenses for-translations-patent attorneys-payment of feesfor each Patent Officeall at a timeOften without knowingwhether he is likely toobtain a patent FOR EACH PATENTOFFICE:-formal examination-search-substantive examination TRADITIONAL PATENT SYSTEM REQUIRES

  7. THE PCT (the Patent Cooperation treaty) • Adopted in 1970 in Washington • Entered into force on 24.01.1978 • Became operational on 1.6.78 with 18 contracting states • As on today total 128 states are the member • India joined PCT on 07.12.98 • THE PCT IS AN AGREEMENT FOR INTERNATIONAL COOPERATION IN THE FIELD OF PATENTS. • IT IS A TREATY FOR RATIONALISATIONS AND COOPERATION WITH REGARD TO THE FILING, SEARCHING & EXAMINATION OF PATENT APPLICATIONS AND THE DISSEMINATION OF THE TECHNICAL INFORMATION CONTAINED THEREIN. • The PCT is administered by IB, WIPO, Geneva, Switzerland

  8. ESTABLISING an international system which enables:Filing single application (the international application ) PCT ESTABLISHES an international system which enables: • Filing single application (the international application • With a single patent office (the receiving office) • In one language having effect in each contracting state (the designated office) • One formal EXAMINATION ( by the receiving office ) • One search ( by the international searching authority ) • One international publication (by the IB of WIPO ) • One optional preliminary EXAMINATION ( by the international preliminary examining authority)

  9. LIMITATION OF THE PCT SYSTEM • PROVIDES PROTECTION FOR INVENTIONS BY APPLYING FOR PATENTS • DESIGN & TRADEMARK PROTECTION CANNOT BE OBTAINED VIA PCT

  10. PCT SYSTEM CONSISTS OF: 1. AN INTERNATIONAL PHASE, COMPRISING:(30/31 MONTHS LONG)* FILING OF INTERNATIONAL APPLICATION* * INTERNATIONAL SEARCH*** INTERNATIONAL PUBLICATION **** INTERNATIONAL PRELIMINARY EXAMINATION (optional) 2. A NATIONAL / REGIONAL PHASE,BEFORE: * DESIGNATED OFFICE** ELECTED OFFICE.

  11. IN PCT SYSTEM • NO PATENT IS GRANTED DURING THE INTERNATIONAL PHASE. • THE PATENTS ARE GRANTED IN THE NATIONAL PHASE BY THE NATIONAL PATENT OFFICES WHICH IS ENFORCEABLE IN THAT COUNTRY ONLY . • THERE IS NO PCT PATENT

  12. PCT TIMELINE-A(before 1.1.04) 30/31 ENTRY IN N.P.Ch I INT. PUBLICATION 12 NO REQUEST FOR EXAMN. 28 16 18 MONTHS 30/31 0 PRELIM EXAMN REPORT ENTRY IN NATIONAL PHASE Ch II FILE INTERNATIONAL APPLICATION FILE APPLICATION LOCALLY NON PCT APPLICATION INT. SEARCH REPORT 19 FILING REQUEST FOR PRELIM EXAMN.

  13. PCT TIMELINE-B(before 1.1.04) 30/31 ENTRY IN N.P.Ch I INT. PUBLICATION 9 28 18 NO REQUEST FOR EXAMN. MONTHS 30/31 0 PRELIM EXAMN REPORT ENTRY IN NATIONAL PHASE Ch II INTERNATIONAL SEARCH REPORT FILE INTERNATIONAL APPLICATION 19 FILING REQUEST FOR PRELIM EXAMN.

  14. EISPE system 0-12 mths IA filed ISA opinion on 16 ISR patentability criteria Art. 19 amdts Int’l publication: IA + ISR 18 (+ Art. 19 amendments) Chapter II Chapter I later of: (+ Art. 34 WO of ISA+3 Demand arguments, No demand filed * amendments) or 22 1st written IPE opinion = ISA opinion (unless IPEA has declared otherwise) IPE procedure Applicant comments on ISA opinion to IB (if no IPER established) (informal procedure) International preliminary report International preliminary report on patentability by ISA (IPRP) on patentability by IPEA (IPRP) (Chapter I of the PCT) (Chapter II of the PCT) (= IPER) IPRP (Chapter I) IPRP (Chapter II) 30 (+ any comments) to EOs to DOs IPRP (Chapter I) IPRP (Chapter II) (+ any comments) publicly available publicly available (on request of EO) National phase entry National phase entry * must in practice file demand by 19 months for Article 22 transitional reservation countries

  15. COMPETENT RECEIVING OFFICE (Article 10, Rule 19) • THE PATENT OFFICE CALCUTTA & ITS BRANCHOFFICES AT MUMBAI,CHENNAI,NEW DELHI (RO/IN) & • INTERNATIONAL BUREAU (RO/IB)

  16. LANGUAGE OF FILING(Rule 12) • RO/IN--ENGLISH OR HINDI • RO/IB--ANY LANGUAG

  17. ELEMENTS TO ACCOMPANY THE INTERNATIONAL APPLICATION • REQUST(PCT/RO/101)--Article 4 • DESCRIPTION --Article 5 • ONE OR MORE CLAIMS -- Article 6 • ABSTRACT --Rule 8 • DRAWING (where applicable) --Article 7 • FEES --Rules 14,15&16 • PA/GPA(where applicable) --Rule 90(not necessary as per pct amendment 1.1.04)

  18. NO.OF COPIES REQUIRED [Rule 11.1(b)] • RO/IN-- * FOUR COPIES OF EACH OF REQUEST,DESCRIPTION, CLAIMS,DRAWINGS & ABSTRACT IF FILED AT POB,Mumbai, Chennai,NewDelhi * THREE COPIES OF EACH DOCUMENT AS MENTIONED ABOVE IF FILED IN P.O. , CALCUTTA • RO/IB--ONE

  19. THE REQUEST (Article 4, Rule 3) • Printed request form (PCT/RO/101)* may be obtained free of charge: from RO/IN or from RO/IB* available on internet (www.wipo.int) • FROM PCT EASY SOFTWARE DOWNLOADED FREE OF COFT FROM www.wipo.int site • Computer- generated request* layout and contents must be same as the printed form* slight adjustments are permitted* any text printed in italics may be omitted

  20. FUNCTION OF RECEIVING OFFICE • RECEIVING INTERNATIONAL APPLICATION FOR PATENT UNDER PCT ACCORDING INT. FILING NO. & DATE • PROCESSING/ CHECKINGOF ESSENTIAL REQUIREMENTS WHICH AFFECTS THE I.F.D. AND OF OTHER FORMAL & PHYSICAL REQUIREMENT ofSAID APPLICATION • --TRANSMITTING* RECORD COPY TO IB**SEARCH COPY TO ISA,(CHOOSEN BY APPLICANT )***APPLICABLE FEES TO APPROPRIATE AUTHORITY • R.O. DOES NOT PERFORM SUBSTANTIVE EXAMINATION

  21. CONDITIONS FOR ACCORDING INTERNATIONAL FILING DATE: ARTICLE 11 i) Applicant –resident or national of Indiaii) Application –in English or Hindiiii) Elements to accompany the application, a) a request b) applicant’s name & address c) description d) one or more claim(s) e) Designation of atleast one PCT contracting state(designation to all pct contracting states are automatic now as per pct amendment)

  22. Physical requirements of international application (Rule 11) • A4 size paper for all sheet • Line spacing: 1.5 cms for pages of text in description, claim & abstract • Minimum & maximum margins for the sheets and drawing as explained in the next slide • Drawings: should not contain text matter in the drawings, so as to avoid problem of translation for national phase

  23. Margin requirements for text (Rule 11)

  24. Margin requirements for drawing

  25. NATIONAL SECURITY MATTERS (Rule 22 & Section 330 of A.I.under PCT) • AT THE PATENT OFFICE, CALCUTTA ALL INTERNATIONAL APPLICATION FOR PATENT ARE REFERRED TO THE EXPERT COMMITTEE FOR REVIEW OF NATIONAL SECURITY MATTERS, AND IF NATIONAL SECURITY CLEARANCE IS REFUSED OR IS NOT OBTAINED THE SAME IS NOTIFIED TO THE APPLICANT & IB OF WIPO

  26. PCT FEESTO RECEIVING OFFICE (THE PATENT OFFICE ,CALCUTTA & ITS BRANCH OFFICES AT NEW DELHI, MUMBAI,CHENNAI) • Transmittal fee : INR 2,000--for natural person INR 8,000--for legal entity • International filing fees : Basic & designation fees combined to form international (30sheets) :filing fees - USD 1102 .All states designated. • Supplement per sheet excess of 30 : USD 12 * • Search fee : ISA/AT -- USD 262 ISA/EP -- USD 1877* ISA/AU -- USD 942 ISA/CN -- USD 181 ISA/US -- USD 1000 ISA/SE -- USD 1877 • Fee for preparing of certified copy of priority document and transmission the same to IB : INR 1,000--for natural person INR 4,000--for legal entity • PCT EASY reduction --- USD 79 • * 75% REDUCTION IN FEES FOR NATURAL PERSON FROM INDIA{ Rule 14,15,16& 96 }

  27. INTERNATIONAL PRELIMINARY EXAMINATION FEES* 75% FEE REDUCTION FOR NATURAL PERSON

  28. MODE OF PAYMENT IN USD • TO FECILITATE THE PAYMENT IN USD, AN ACCOUNT HAS BEEN OPENED BY RO/IN WITH SBI, NEW YORK BRANCH ASSIGNING A/C NO. 2111-250821-001 • INDIAN APPLICANT, FILING INTERNATIONAL APPLICATION FOR PATENT UNDER PCT, TO REMIT THE CONSOLIDATED AMOUNT IN USD BY D.D. PAYBLE TO THE CONTROLLER OF PATENTS AT SBI, NEW YORK BRANCH FOR PAYMENT TOWARDS BASIC FEE, DESIGNATION FEE & SEARCH FEE

  29. COMPETENT INTERNATIONAL SEARCHING & EXAMINING AUTHORITIES (ISAs) (Article 16, Rule 35) • AUSTRIAN PATENT OFFICE (AT) • AUSTRALIAN PATENT OFFICE(AU) • EUROPEAN PATENT OFFICE ( EP) • CHINESE INTELLECTUAL PROPERTY OFFICE (CN) • UNITED STATES PATENT& TRADEMARK OFFICE (US) • SWEDISH PATENT OFFICE (SE)

  30. COMPETENT INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES (IPEAs)(Article 32, Rule 59) • AUSTRIAN PATENT OFFICE (AT) • AUSTRALIAN PATENT OFFICE (AU) • EUROPEAN PATENT OFFICE ( EP) • CHINESE INTELLECTUAL PROPERTY OFFICE (CN) • UNITED STATES PATENT & TRADEMARK OFFICE (US) • SWEDISH PATENT OFFICE (SE)

  31. ENTRY INTO NATIONAL PHASE • Entry in National Phase as later as 31 months from priority date by filing: • A request on form 1 or on a plain paper containing details of international application. • Pay National fees (for India 1000/4000.) • Proof of right to file if applicant is not inventor. • Information regarding foreign filing form 3. • Declaration as to inventorship (form-5). • Copy of PCT pamphlet with international application & search report. • Copies of any amendments, preliminary examination report. • PA/GPA where applicable (Note :- The grant of Patent is governed National law) designated country.

  32. STEPS FOR GRANT OF A PATENT THROUGH PCT ROUTE • FILING OF AN INTERNATIONAL APPLICATION • FORMAL EXAMN. BY R.O. • INT. SEARCH BY I.S.A. • INT. PUBLICATION BY WIPO • PRELIM. EXAMN. BY I.P.E.A.(OPTIONAL) • ENTRY INTO NATIONAL PHASE IN DESIGNATED COUNTRY • EXAMN. BY DESIGNATED COUNTRY OF PATENT APPLICATION AS PER THEIR OWN PATENT LAW • GRANT OF THE PATENT BY DESIGNATED COUNTRY • Denotes international phase • Denotes National phase

  33. BENEFITS OF PCT SYSTEM. • Fast processing of applications for grant of Patent during National Phase. • Saving of time and money if search report by ISA is adverse by abandoning the application. • Applicant gets 30/31 months for entry into National Phase. This time may be used to explore market values of his invention.

  34. BENEFITS OF PCT SYSTEM. • The application for the Patent inthe designated office is deemed to have been filed on the date of International filing i.e 19 or 30/31 months prior to entry to N.P. • Language of filing does not affect the prority date if filed in the language accepted by R.O. • Some countries provide fees reductions in fees in National Phase when comes through PCT. • Priority documents need not to be filed in N.P by applicant the same is sent by the I.B., WIPO to the National Offices. • No need to draft different applications for different designated offices. International application serves for all.

  35. THANKS

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