SP-PCT-analysis

OMS PATENT SERVICES PRIVATE LIMITED

PCT Analysis

By P Sathiyan


OVERVIEW

• PURPOSE OF PCT• INTERNATIONAL APPLICATION• RECEIVING OFFICE• INTERNATIONAL SEARCHING AUTHORITY AND

SEARCH REPORT• INTERNATIONAL PUBLICATION• PCT TIMELINE


PURPOSE OF PCT To make a

contribution to the progress of science

and technology

To perfect the legal protection of inventions,

To simplify and render more economical the

obtaining of protection for inventions where

protection is sought in several countries

Contracting States

Establishment of Union

Union of all the countries (Contracting States)

Cooperation in the filing, searching, and examination, of applications for the protection of inventions and for rendering special technical services.

PCT


PCT - Definitions

National patent

Regional Patent

International application

National Office

National Office of or acting for the State designated by the applicant

Designated Office

National Office of or acting for the State elected by the applicant

Elected Office

National Office or theintergovernmental organization with which the international application has been filed

Receiving Office

Designation mean that the desired protection consists of the grant of a patent by or for the designated State

National Application

Regional Application

PHASES AND IMPORTANCE OF PCT

OMS PATENT SERVICES PRIVATE LIMITEDAdvantages of PCT

Unified filing procedure

National or Regional

proceduresRespective fees and

translation costs

allow new ventures more time to locate i) strategic partnerships, ii) funding, and markets,

before their technology becomes public

Two Phases of PCT

International Phase National Phase

Patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT

Follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT

Article 3 - International Application


Inventio

n

Protectio

n

Contracting states

International Application


A request

A description

One or more claims

One or more drawings

Abstract

Particularly not for the purpose of interpreting the scope of the

protection sought


Should be in a prescribed language

Should comply with

the prescribed

physical requirements

Should comply with

the prescribed

requirement of unity of invention

Should be subject to the

payment of the

prescribed fees

(Article 3(2))

(Article 3(2))

(Article 3(2))

(Articles 3(2) and 14(2))

(Articles 3(2) and 3(3))


Article 4 – The Request

A petition

Designation of the contracting state

Prescribed date concern

ing Applicant and Agent

Title of

the invention

Name and

other prescribed data of

the inventor(

s)


Article 5 - The DescriptionThe description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

Article 6 - The ClaimsThe claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.


Article 7 – The Drawings(1) Subject to the provisions of paragraph (2)(ii), drawings shall be required

when they are necessary for the understanding of the invention. (2) Where, without being necessary for the understanding of the invention,

the nature of the invention admits of illustration by drawings: (i) the applicant may include such drawings in the international application

when filed, (ii) any designated Office may require that the applicant file such drawings

with it within the prescribed time limit.


Article 8 – Claiming Priority


Article 9 – The Applicant

Applicant

Any resident or national of a

Contracting State

The Assembly may decide to allow the residents and the

nationals of any country party to the Paris Convention for the

Protection of Industrial Property which is not party to this Treaty to file international applications.

The concepts of residence and nationality, and the application of

those concepts in cases where there are several applicants or

where the applicants are not the same for all the designated States,

are defined in the Regulations


Article 9 – The Applicant


Article 10, 11 & 14 – The Receiving Office, Filing date and Defects in IA

Article 10 Article 11(1)14(1)(a)

Article 11(2)(a)14(1)(b), Rule 20.1 20.3, 26.1

Article 11(1), 11(2)(b) Rule 20.2

Article12Rule 22, 23

Checks IA to determine the requirements/fees

prescribed by PCT

Invites Applicant to rectify the

requirements/corrections

After checking, International Filing date

is issued to IA

Transmit the copies of IA to the IB and ISA for further proceedings


Article 12 – Transmittal of IA to IB & ISA

Copy of International Application

Article 12(1) Kept in RO

(Home Copy)

Article 12(1) Transmitted to International

Bureau(Record Copy)

Article 12(1) Transmitted to ISA

(Search Copy)

True Copy


Article 15 – International SearchEach IA is subject to international search

To discover relevant prior art

“Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations); it is “relevant” in respect of the international application if it can help determine whether or not the claimed invention is new, whether or not it involves an inventive step.

Search is made on the basis of Claims, with due regard to the description and drawings (if any).


Article 16 – International Searching Authority

Establishes international search report (ISR) (Rules 42 and 43)

and/or declaration

that no international search report

will be established

(Article 17(2))

Establishes

written opinion of the

ISA (Rule 43bis)

Checks title

(Rule 37);

checks abstract (Rule

38)

Authorizes

rectification of

obvious mistakes

(Rules 91.1(b)(ii) and

(iv))

AT Austrian Patent OfficeAU Australian Patent OfficeBR National Institute of Industrial Property (Brazil)CA Canadian Intellectual Property OfficeCN State Intellectual Property Office of the People's Republic of ChinaEG Egyptian Patent OfficeEP European Patent Office (EPO)ES Spanish Patent and Trademark OfficeFI National Board of Patents and Registration of FinlandIL Israel Patent OfficeIN Indian Patent OfficeJP Japan Patent OfficeKR Korean Intellectual Property OfficeRU Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)SE Swedish Patent and Registration OfficeUS United States Patent and Trademark Office (USPTO)XN Nordic Patent Institute

Article 16 & 18 – ISA & International Search Report


Article 18(1) Rule 42When must the international search report be established?

Nine months from the priority date, whichever time limit expires later.

Classification of the subject matter of the invention (according to the International Patent Classification) and

an indication of the fields searched (those fields being identified by a reference to their classification) as well as any electronic data base searched (including, where practicable, the search terms used).

Citation of the documents considered relevant

Rule 43Contents of the international search report ?

Report is established within three months from the receipt of the search copy by the International Searching Authority or

Article 21 and Rule 48When does International Publication happens ?Promptly after 18 months from priority date on the Internet (www.wipo.int/pctdb/)

What are the publication languages ?Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or SpanishTitle, abstract and search report always (also) in English


Article 18(2) Rule 44.1 How do the applicant and the International Bureau receive the international search report?

The applicant can obtain copies of the documents cited in the international search report by requesting them from the International Searching Authority.

Article 20(3) Rule 44.3 How can the applicant obtain copies of the documents cited in the international search report?

ISA transmits on the same day one copy of the international search report (or, where none is established, a declaration to that effect) and written opinion established by it to the applicant and to the International Bureau.

The latter publishes the international search report with the published international application and sends a copy to the designated Offices.

Certain International Searching Authorities, however, transmit such copies automatically without extra charge to the applicant, together with the international search report.

Article 16 & 18 – ISA & International Search Report

Written Opinion of ISA to the search report


Rule 43bis.1(a) In respect of every international application filed on or after 1 January 2004, the International Searching Authority (ISA) will establish, at the same time that it establishes the international search report or the declaration referred to in Article 17(2)(a),

a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, very similar in scope to the written opinion established by the International Preliminary Examining Authority during international preliminary examination.

Rule 43bis.1(c) 66.1bis If a demand for international preliminary examination is filed in respect of an international application

The written opinion which has been established by the International Searching Authority will, in general, be used by the International Preliminary Examining Authority as its own first written opinion, unless the International Preliminary Examining Authority notifies the International Bureau to the contrary.


Article 21 - International PublicationInternational application is not published by the International Bureau in any of the following cases:

(i) if the international application is not accorded an international filing date by thereceiving Office.

(ii) if the international application is considered withdrawn before the technicalpreparations for publication have been completed.

(iii) if the international application is withdrawn by the applicant before the technical preparations for publication have been completed.

(iv) if the only designated State remaining at the time of the completion of the technical preparations for publication, is the United States of America (since the United States of America made a declaration under Article 64(3)(a)), unless any of the exceptions specified in Article 64(3)(c) applies.


Article 26 – Opportunity to correct before designated office

Designated Office


No Rejection

On the basis of Non Compliance with the requirements of this Treaty and Regulations


Effects of International PublicationArticle 29What are the legal effects of international publication?

Article 29 has the effect of ensuring, with certain qualifications, that provisional protection is available after the international publication of an international application in the same way as it is after national publication of unexamined national applications.

The qualifications are such as to enable Contracting States to make such protection conditional on the furnishing of translations (in some circumstances), on the expiration of 18 months from the priority date, and/or on receipt by the designated Office of a copy of the international application as published under the PCT.

PCT TIMELINE


International Phase

Filing an application File PCT ISR PublicationDemand for International Examination

International Preliminary report

Enter National Phase

0 12 16 18 22 28 30

Months


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