PATENT COOPERATION TREATY

By

Nishant Kewalramani Partner Brain League

PATENT COOPERATION TREATY

Treaty signed on 19 June 1970

Entered into force on 21 January 1978 with18 contracting states Accession- any Paris Convention member As of 2012- 146 Contracting States

PHASES

International phase

National phase

FILING

PCT Easy

PCT Safe

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

(optional) File demand for International preliminary examination

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

(optional) File demand for International preliminary examination

Typically a national patent application in the home country of the applicant

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States

(optional) File demand for International preliminary examination

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

(optional) File demand for International preliminary examination

Report on state of the art (prior art documents and their relevance) + initial patentability opinion

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Disclosing to world content of application in standardized way

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

Enter national phase 28 (optional) International preliminary report on patentability 30

22

(optional) File demand for International preliminary examination

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

(optional) File demand for International preliminary examination

Request an additional patentability analysis on basis of amended application

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

(optional) File demand for International preliminary examination

Additional patentability analysis, designed to assist in national phase decisionmaking Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

The PCT System --typical use, in more detail

Express intention and take steps to pursue to grant in various states

(months) 0 File local application

12 File PCT application

International publication 16 18 International search report & written opinion

Enter national phase 22 28 (optional) International preliminary report on patentability 30

(optional) File demand for International preliminary examination

Slide taken from Kim Jay Hyons ppt on PCT at Panorama Business School

INTERNATIONAL PHASE

Various authorities involved in the International phase

Receiving office International Searching Authority International Bureau International Preliminary Examination Authority (if elected)

RECEIVING OFFICE (RO) FILING

Determination of RO Fees Subject of International application Designating states Elements of International application

Request (Form PCT/RO/101) Description Claim(s) Abstract, Drawing(s) (if any)

INTERNATIONAL SEARCHING AUTHORITY (ISA)

Objective of International Search Selection of ISA Establishment of ISR Establishment of written opinion Assessment of invention IPRP(I) no demand is filed

INTERNATIONAL BUREAU (IB) - PUBLICATION

Time of Publication
Languages of publication

Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish.

INTERNATIONAL PRELIMINARY EXAMINATION AUTHORITY (IPEA)

Optional Step Filing demand for examination Selection of IPEA Formalities examination
Competent IPEA Time period Fees

Examination
Opinion on patentability + ISR = first written opinion Amendments Transmission of IPRP(II)

Assessment

NATIONAL PHASE

Regional agreements National fees

Translation if required

NATIONAL PHASE ENTRY

INDIA 31 MONTHS Treated as any other national application after the entry. Early entry possible upon payment of extra fee.

WHY PCT

More Time Pushing Costs

Opinion on patentability