You have an invention.

How can you protect it

in several countries?

1
 Options
1. You can file separate patent applications at the same
time in all of the countries in which you would like to
protect your invention
2. You can file a patent application in a Paris
Convention country and then file separate patent
applications in other Paris Convention countries
within 12 months from the filing date of that first
patent application, giving you the benefit in all those
countries of the filing date of the first application
3. You can file an application under the PCT, which is
simpler, easier and more cost-effective

2
Patents Cooperation Treaty
(PCT)
 Contents
Traditional Patent System
PCT
• Overview
• History
• Accession
Purpose of the PCT
Advantages of the PCT

Procedure

• Filing
• Search
• Publication
• Optional examination
• National and regional phases
References
4
 Traditional Patent Systems
0 12

(Months)
File Applications
Abroad within 12
File Application months
Locally

• Local patent application followed within 12 months by multiple foreign

applications claiming priority under Paris Convention:
– Multiple formality requirements
– Multiple searches
– Multiple publications
– Multiple examinations and prosecutions of applications
– Translations and national fees required

5
 PCT Overview
 The PCT is an international treaty, administered by the World
Intellectual Property Organization (WIPO), 184 Members

 The PCT makes it possible to seek patent protection for an

invention simultaneously in each of a large number of
countries by
– filing a single “international” patent application instead of filing several
separate national or regional patent applications

– The granting of patents remains under the control of the national or

regional patent Offices in what is called the “national phase”

6
 Contd..
 Filing:
– One can file an international application, complying with
the PCT formality requirements, in one language, and
pays one set of fees
 International Search:
– An “International Searching Authority (ISA)” (one of the
world’s major patent Offices) identifies the published
documents
– It might have an influence on whether your invention is
patentable or not
7
 Contd…
 International Publication:
– As soon as possible after the expiration of 18 months from the
earliest filing date, the content of your international application is
disclosed to the world
 International Preliminary Examination:
– An “International Preliminary Examining Authority (IPEA)” (one of the
world’s major patent Offices), carries out an additional patentability
analysis
– Usually on an amended version of your application
 National Phase:
– After the end of the PCT procedure
– you start to pursue the grant of your patents directly before the
national (or regional) patent Offices of the countries in which you
want to obtain them 8
 PCT System
Chapter I
30
International
20
(Months) Publication

0 12 16 18
OR
International File Demand Enter
File First File Search Report/ National Phase
Application PCT Written
Opinion
International
• Local application followed within 12 months Preliminary 30
by the PCT, claiming priority under the Paris Examination
Convention.
– One set of formalities requirements
Chapter II
– International search & publication
– Optional international preliminary examination
– Translations and national fees required at 20 or 30
months, and only if applicant wants to proceed with
national phase entry
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 History

 The Washington Diplomatic Conference on the Patent

Cooperation Treaty took place from May 25 to June 19,1970.
The Patent Cooperation Treaty was signed in Washington at
the very end of the conference, i.e. on June 19, 1970.

 The Treaty entered into force on January 21, 1978 initially

with 18 Contracting States. The first international applications
were filed on June 1, 1978.

 The Treaty was subsequently amended in 1979, and

modified in 1984 and 2001. 10
 Accession
 Any Contracting State to the Paris Convention for the
Protection of Industrial Property can become a member of the
PCT.

 A majority of the world's countries are signatories to the PCT,

including all of the major industrialized countries (with a few
exceptions, including Argentina and Taiwan).

 As of December 30, 2006, there were 135 Contracting States

to the PCT.

 On March 18, 2007 for the Kingdom of Bahrain, the 135th PCT
Contracting State.
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 Advantages of the PCT
 To file in up to 135 countries with a single international
application
 To delay the expenses associated with:

– Translations
– Foreign filing fees
– Local associates
 Compliance with the form prescribed for the international

application must be accepted by all designated States

during national stage
 To provide an early indication of pertinent prior art and

written opinion as to the novelty, inventive step and

industrial applicability of the claimed invention
 To give extra time for assessment of commercial viability
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2/17/2006
in designated states
PCT Procedure
FILING

 An international patent application must be prepared in

accordance with certain formal requirements set out in
the Treaty and Regulations

 These have become international standards effective in

all of the PCT Contracting States.

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 Contd..

 Right to file an international patent application

– You are entitled to file an international patent
application if you are a national or resident of one of
the PCT Contracting States.

– If there are several applicants named in the

international application, only one of them needs to
comply with this requirement

15
 Contd..

 International patent application filing

– national patent Office, or directly with
WIPO
– Both of these Offices act as PCT
“receiving Offices”
– Electronic filing
• receiving Offices
• WIPO’s electronic filing software
• PCT-SAFE (“Secure Applications Filed
Electronically”)

16
 Contd..

 PCT-SAFE software validates the entered data and draws

the applicant’s attention to incorrectly or inconsistently
completed parts.
 It is possible to attach the application text and drawings in
XML as well as in other electronic formats, such as PDF
or TIFF format (the file formats available depend on the
receiving Office selected).
 Applicants who file electronically are entitled to certain
PCT fee reductions – the highest reductions are
applicable when the filing format is XML.
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 Contd..
 PCT applicants generally pay three types of fees
– An international filing fee of 1,400 Swiss francs
– A search fee which can vary from approximately 180 to
1,900 US dollars depending on the International
Searching Authority chosen,
– A small transmittal fee which varies depending on the
receiving Office.
 you have to pay only a single set of fees for filing
the international patent application with the PCT
receiving Office.
 These fees cover the filing, searching and
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publication of the international patent application,
19
 Regulations under the PCT
Exchange rate
SCHEDULE OF FEES INR/CHF=35.19
(as in force from October 12, 2006)
As on 30th Jan 07

Fee Amounts
1. International filing fee 1,400 Swiss francs (Rs49278)
plus
for each sheet of the international 15 Swiss francs (Rs5280)
application in excess of 30 sheets

2. Handling fee: 200 Swiss francs (Rs 7039)

Reductions
3. The international filing fee is reduced by the following amount if the international
application is, as provided for in the Administrative Instructions, filed:
(a) on paper together with a copy in electronic form, in character coded
format, of the request and the abstract: 100 Swiss francs
(b) in electronic form, the request not being
in character coded format: 100 Swiss francs
(c) in electronic form, the request being in character coded format:
200 Swiss francs
(d) in electronic form, the request, description, claims and abstract being in
character coded format: 300 Swiss francs
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 Contd
 Fees you will need to pay as you enter the national phase
represent the most significant pre-grant costs
 They can include fees for translations of your application,
national (or regional) Office filing fees and fees for acquiring
the services of local patent agents.
 In several Offices, national filing fees are lower for
international patent applications than they are for direct
national applications

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22
23
 Regulations under the PCT
SCHEDULE OF FEES
(as in force from October 12, 2006)

The international filing fee (where applicable, as reduced under item 3) and the
handling fee are reduced by 75% if the international application is filed
by:
(a) an applicant who is a natural person and who is a national of and resides
in a State whose per capita national income is below US$3,000
(according to the average per capita national income figures used by the
UN for determining its scale of assessments for the contributions payable
for the years 1995, 1996 and 1997); or
(b) an applicant, whether a natural person or not, who is a national of and
resides in a State that is classed as a least developed country by the
United Nations; provided that, if there are several applicants, each must
satisfy the criteria set out in either sub-item (a) or (b). 24
Search

 A search or international search is then made by an authorized

International Searching Authority (ISA) to find out the most
relevant prior art documents regarding the claimed subject-
matter. This results are included in International Search Report
(ISR), together with a written opinion regarding patentability.

 The ISR is normally provided by the ISA to the applicant 9

months after filing of the application in the event of a first filing
and 16 months after the priority date in the event of a
subsequent filing (i.e., claiming the priority of a first filing).

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 The ISR is published together with the international application
(or as soon as possible afterwards). The written opinion is
initially confidential, but unless it is superseded by an
International Preliminary Examination Report (see optional
examination, below) it is made available in the form of an
"international preliminary report on patentability (Chapter I of
the Patent Cooperation Treaty)" (commonly abbreviated "IPRP
Chapter I") 30 months after the filing date or the priority date if
any.
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Publication

 18 months after the filing date or the priority date if

any, the international application is published by the
International Bureau (IB) of WIPO, based at Geneva,
Switzerland, in one of the eight "languages of
publication": Arabic, Chinese, English, French,
German, Japanese, Russian and Spanish.
 There is an exception to this general rule however: if
18 months after the priority date, the international
application only designates the United States, then
the application is not automatically published.
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Optional
Examination
 Afterwards, a international preliminary examination may
optionally be requested ("demanded"). The "international
examination" is achieved by an authorized International
Preliminary Examination Authority (IPEA). This results in an
International Preliminary Examination Report (IPER). Since
2004, the IPER now bears the title "international preliminary
report on patentability (Chapter II of the Patent Cooperation
Treaty)" (commonly abbreviated "IPRP Chapter II").
 When an examination is demanded, the contracting states for
which the examination is demanded are called Elected Offices
(under Chapter II), otherwise they are called Designated
Offices (under Chapter I).
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National &
regional phases

 Finally, at 30 months from the filing date of the international

application or from the priority date if any, the international
phase ends and the international application enters in
national or regional phase. However, any national law may
fix time limits which expire later than 30 months. National
and regional phases can also be started earlier on the
express request of the applicant.
 If the entry into national or regional phase is not performed
within the prescribed time limit, the international application
generally ceases to have the effect of a national or regional
application. 29
 Requirements for an International
Filing Date

Application must contain:

– An indication that it is intended as an international

application filed under the PCT
– A designation of at least one Contracting State
– Name of the applicant
– A description
– One or more claims
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2/17/2006
 The amended Regulations contain a broad set of enabling

provisions relating to electronic filing. The standards and other

details will, at least initially, be set out in the PCT Administrative

Instructions.
– Technical and legal problems remain to be solved.

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 PCT Resources (1/2)
 Manual of Patent Examining Procedure (MPEP)
– Chapter 1800
– Appendix T (PCT and regulations)
– Appendix AI (PCT Administrative Instructions)
 PCT Help Desk:
– Phone: 571-272-4300
– Fax: 571-273-0419
 PCT home page on USPTO Internet site:
– www.uspto.gov/go/pct/
 PCT newsletter, PCT Applicant's Guide, etc.,
available on the Internet:
– www.wipo.int/pct/en/index.html 32
2/17/2006
 PCT Resources (2/2)
 GAO Report No. GAO-03-910 (“Experts’ Advice
for Small Businesses Seeking Foreign Patents”):
– www.gao.gov
– www.wipo.int/sme/en
 Inventors Resources on USPTO Internet site:
– http://www.uspto.gov/web/offices/com/iip/index.htm
 Searching US Patents:
– http://www.uspto.gov/patft/index.html
 Searching Foreign Patents:
– European patent databases:
• http://www.espacenet.com/access/index.en.htm
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2/17/2006
THANK YOU