Introduction to the Patent Cooperation Treaty (PCT)

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1 The Introduction to the Patent Cooperation Treaty (PCT) Moscow, Russian Federation June 2, 2015 Thomas MARLOW Policy Officer PCT Business Development Division Patents and Technology Sector

2 World Intellectual Property Organization (WIPO) Presentation-2 Photo: WIPO The global forum for intellectual property services, policy, information and cooperation. Established in 1967, headquarters in Geneva, Switzerland. Self-funding agency of the United Nations with 188 member states. Mission: to lead the development of a balanced and effective intellectual property (IP) system that enables innovation and creativity for the benefit of all. The

3 Traditional patent systems (months) 0 12 File locally File s abroad Presentation-3 Local patent followed within 12 months by multiple foreign s claiming priority under Paris Convention (1883): multiple formality requirements multiple searches multiple publications multiple examinations and prosecutions of s translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI The

4 PCT system (1970, in force 1978) Local patent followed within 12 months by international under the PCT, claiming Paris Convention priority, with national phase commencing at 30 months*: one set of formality requirements international search international publication international examination international can be put in order before national phase translations and national fees required at 30 months,* and only if applicant wishes to proceed Presentation-4 * For exceptions, see The

5 Presentation-5 General remarks on the PCT system (1) The PCT system is a patent filing system, not a patent granting system. There is no PCT patent The PCT system provides for an international phase comprising: filing of the international international search and written opinion of the ISA international publication and international examination a national/regional phase before designated Offices The decision on granting patents is taken exclusively by national or regional Offices in the national phase The

6 General remarks on the PCT system (2) Only inventions may be protected via the PCT by applying for patents, utility models and similar titles. Design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively). The PCT is administered by the WIPO as are other international treaties in the field of industrial property, such as the Paris Convention. Presentation-6 The

7 PCT Contracting States (148) Protection through national and/or regional patent (depending on State) Regional patents (Eurasian patent, European patent, Presentation-7 ARIPO patent, OAPI patent) The

8 PCT Applications Source: WIPO Statistics Database 214,500 PCT s in 2014 (+4.5% from 2013) 55.3% of non-resident patent s were made through the PCT in 2013 (about 475,500 in total, compared to about 384,200 direct non-resident filings outside of the PCT) Presentation-8 The

9 Top 10 PCT applicants in 2014 Presentation-9 Source: WIPO The

10 Top 10 PCT filing countries in 2014 Source: WIPO Presentation-10 The

11 Traditional patent system vs. PCT system Traditional (months) 0 12 File local Fees for: - translations - Office fees - local agents File s abroad Fees for: - translations - Office fees - local agents PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Presentation-11 The

12 Filing a PCT Application PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Typically filed in same national/regional patent office (known as the receiving Office) one set of fees, one language, one set of formality requirements and legal effect in all PCT States Presentation-12 The

13 Search PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Presentation-13 Report from Searching Authority on state of the art (prior art documents and their relevance) + initial patentability opinion Helps applicant to know whether he is likely to obtain a patent The

14 PCT Searching Authorities The Patent Offices (20 in total) of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, Japan, India, Israel, Republic of Korea, Russian Federation, Spain, Singapore*, Sweden, Ukraine*, United States of America, European Patent Office, Nordic Patent Institute Competent Authority depends on receiving Office (choice for applicant in some receiving Offices) For Russian nationals or residents choice is Rospatent (801 requests in 2014) or European Patent Office (76 requests in 2014) * Office appointed but yet to begin operations as a PCT Authority Presentation-14 The

15 Publication By the Bureau of WIPO - disclosing to the world in a standardized way PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Presentation-15 The

16 Preliminary Examination PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Presentation-16 Additional patentability analysis on basis of amended by Preliminary Examining Authority Allows applicant to correct defects or refute arguments in written opinion The

17 National Phase Entry Express intention and take steps to pursue to grant in selected states PCT (months) 0 publication Enter national phase File local File PCT search report & written opinion File demand for examination report on patentability Presentation-17 The

18 Advantages of using the PCT Postpones major costs of international patent protection Translations Fees at patent offices Local patent agent fees search, written option and (optionally) supplementary international search and international examination by a major patent office Harmonized formal requirements Presentation-18 The

19 Further Information on the PCT For further information about the PCT, see For general questions about the PCT, contact the PCT Information Service at: Telephone: (+41-22) Facsimile: (+41-22) PCT Applicant s Guide (updated weekly) Presentation-19 The

20 The Thank you! Thomas Marlow Policy Officer, Patent Cooperation Treaty (PCT) Business Development Division World Intellectual Property Organization (WIPO) 34, chemin des Colombettes, 1211 Geneva 20, Switzerland T ;

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