Drafting, Filing and Processing of PCT Applications

Transcription

1 Drafting, Filing and Processing of PCT Applications Mikhail GAVRIKOV WIPO Tehran, Iran June 18-19, 2014

2 What does РСТ filing include? Findings prior to PCT application drafting starts: when to file application? where to file? language of an application? how to file? which ISA to choose? Application drafting Furnishing of PCT application with a Receiving Office PCT fees payment Filing-2 PCT filing may be considered accomplished only when Form IB/301 has been received from the International Bureau (or upon receipt Form RO/105 in a case RO/IB)

3 Procedural findings prior to PCT application drafting Filing-3

4 Where to file PCT application? For nationals/residents of the Islamic Republic of Iran there are two options: National Industrial Property Office (RO/IR) WIPO International Bureau (RO/IB) WARNING: Observation of national security provisions, if any, is applicant s responsibility Filing-4

5 Comparison of RO/IR and RO/IB RO / IR RO / IB Accepted filing languages EN any Language of request EN any of publication languages Competent ISA / IPEA RU, EP at least RU, EP PCT-EASY filing no yes electronic filing no epct, PCT-SAFE Language of communication application language EN, FR Transmittal fee yes(?) no* Power of attorney is required yes no Restoration of the right of priority yes (?) yes (both criteria) Fee for restoration of the right of priority yes(?) no communication no (?) yes Filing-5 * for applicants who is entitled for fees reduction

6 When to file a PCT application? Option 1: РСТ filing in the end of priority period (months) International publication National filing PCT filing ISR Option 2: РСТ filing as first filing (no priority claiming) International (months) publication PCT filing ISR Filing-6

7 How to file: different options Media of application: on paper PCT-EASY mixed mode (fee reduction) fully in electronic format (more fee reduction) Methods of filing: regular mailing services by facsimile online filing Web-based services (epct) specialized software (PCT-SAFE) Filing-7

8 PCT filing by Medium of Filing Filing-8 Filing structure in 2013: paper 7,4%; PCT-EASY 2,6%; fully electronic 90% (in PDF format 49%)

9 Which ISA to choose? Competent RO Competent ISA Competent IPEA RO / IR ISA / EP IPEA / EP RO / IB ISA / RU IPEA / RU Filing-9

10 Choice of International Searching Authority Filing-10 Search cost Timeliness performance indicator Area of technology Desire for more diversified (broader) search Limitations on selection of the IPEA Available Supplementary International Searching Authorities Potential reduced national/regional search fees Potential effect on national/regional phase entry strategy Personal preference Effect on the availability of PCT/PPH

11 Comparison of ISA / RU and ISA / EP ISA / RU ISA / EP Accepted languages RU, EN EN, FR, DE Limitations on selection IPEA RU, EP EP Competence regarding to methods of treatment yes no Sequence listing in electronic form yes yes Language of communication RU, EN EN, FR, DE SIS service yes yes Search fee RUB EUR (580 EUR) Protest fee RUB 830 EUR (60 EUR) Filing-11

12 Filing-12 PCT application drafting

13 Elements making up the international application Request (Article 3(2)) description (Article 3(2)) one or more claims (Article 3(2)) abstract (may be filed later without affecting the international filing date) (Articles 3(2) and 3(3)) drawings (where applicable) later submission may, subject to certain conditions, result in a later international filing date (Articles 3(2) and 14(2)) sequence listing part of description (where applicable) (Rule 5.2(a)) Filing-13 indications containing references to deposited microorganisms or other biological material (some designated Offices (e.g. Japan) require that they be in the description or in the international application on the international filing date) (Rule 13bis)

14 The request Printed request form (Form PCT/RO/101) periodically updated available on Internet ( may be obtained free of charge from the receiving Office or the International Bureau Computer-generated request (Rules 3.1 and 3.4, Section 102(h)) layout and contents must correspond to those of the printed form (no boxes may be omitted) slight adjustments are permitted any text printed in italics may be omitted PCT-SAFE (EASY mode) request (Rule 89ter and Section 102bis) Electronic filing of the international application in accordance with Part 7 and Annex F of the Administrative Instructions with ROs which accept the filing of international applications in electronic form Filing-14

15 Concept and operation of designation system (Rule 4.9) Automatic and all-inclusive designation of all PCT Contracting States exceptions to the all-inclusive designation possible for DE, JP and KR (countries with particular rules on self-designation ) but only if the international application contains a priority claim to an earlier application filed in the State that is to be excluded otherwise withdrawals of designations possible Choice of types of protection postponed until national phase entry (e.g. patent or utility model, national or regional patent) Parent information (continuation applications, patents of addition) may be included in PCT request form for search purposes Filing-15

16 Physical requirements of the international application (Rule 11) (1) A4 size paper for all the sheets (Rule 11.5) Line spacing: 1 1/2 for pages of text in description, claims and abstract (Rule 11.9(c)) Minimum and maximum margins for the sheets of text and drawings (Rule 11.6) Filing-16 Indication of the applicant s or agent s file reference (Rule 11.6(f) and Section 109) 12 characters maximum in the upper left-hand corner of the sheet within 1.5 cm of the top of the sheet

17 Physical requirements of the international application (Rule 11) (2) Numbering of the sheets (Rule 11.7, Sections 207 and 311) centered at the top or bottom of the sheets, not in the margin 4 series: request description, claims, abstract drawings (if any) sequence listing part of the description (if any) Special requirements for drawings (Rule 11.13) Filing-17 Recommendation: no text matter in the drawings (avoids problems with translations for national phase)

18 Headings of the parts of the description (Rule 5 and Section 204 of the Administrative Instructions) Technical Field Background Art Disclosure of Invention or Summary of Invention Brief Description of Drawings Best Mode for Carrying Out the Invention or, where appropriate, Mode(s) for Carrying Out the Invention Industrial Applicability Sequence Listing Filing-18 Sequence Listing Free Text

19 Elements accompanying PCT application Filing-19

20 Elements which may accompany an international application Filing-20 translation of the international application for the purposes of international search or international publication may be furnished later without affecting the international filing date (Rules 12.3 and 12.4) separate power of attorney or copy of general power of attorney may be filed later without affecting the international filing date (Rules 90.4 and 90.5) priority document(s) may be furnished until the date of international publication (Rule 17.1) sequence listing in electronic form complying with the Standard set out in Annex C of the Administrative Instructions may be furnished later directly to the ISA without affecting the international filing date but subject to a late furnishing fee (Rule 13ter) separate indications concerning deposited biological material that are not part of the international application, for ex., Form PCT/RO/134 (Rule 13bis)

21 Filing-21 Formats of PCT application

22 Media of application All elements are on paper Partially in electronic format: All elements are on paper + request and abstract being in character coded format (PCT-EASY) Fully in electronic format: request being in character coded format; other elements being in image format request, description, claims, abstract being in character coded format Filing-22

23 Allowable electronic document formats Electronic formats acceptable for e-filing: Character coded formats: extensible Markup Language (XML) complying with specification established in Annex F of the PCT Administrative Instruction Image formats: Adobe Portable Document Format (PDF) version 1.4 (and lower); resolution of 300dpi (preferable); A4; black&white; OCR disabled alternative formats: TIFF V6.0, JFIF Filing-23

24 How to get documents in XML? Conversion from Microsoft Word document (.doc) PCT-SAFE EDITOR software PatXML WIPO online converter (pilot) Alternative converters (JPO, KIPO) For nucleotide and amino acid listing software Patentln software BiSSAP Filing-24

25 Filing-25 PCT-SAFE EDITOR application

26 Furnishing PCT application with a Receiving Office Filing-26

27 How to submit IA: different options Method of filing Medium Mail Facsimile Online Paper РСТ-EASY Electronic format (pdf, tiff) Electronic format (XML) Filing-27

28 Filing-28 PCT fees

29 Filing-29 Fees payable to the receiving Office (RO) transmittal fee (depending to RO) international filing fee (for IB) (full amount is CHF) search fee (for ISA) (depending to ISA) supplement per sheet in excess of 30 (for IB) (15 CHF per sheet) fee for priority document late payment fee late furnishing fee (translation of international application) fee for requesting restoration of the right of priority fee for copies of documents (Fees indicated in italics are payable only in certain circumstances)

30 Time limits for payment of fees Chapter I: transmittal fee, international filing fee, search fee: one month from the date of receipt of the international application by the RO (Rules 14.1(c), 15.4 and 16.1(f)) special provisions for cases where the international application is transmitted to RO/IB under Rule 19.4 (Rule 19.4(c)) Filing-30

31 e-filing: fee reductions PCT-EASY type of filing (on paper + request and abstract on physical medium) CHF 100 Fully electronic type of filing with application body in image format (for example PDF, TIFF attachments) and only the request in character coded format (XML) CHF 200 Fully electronic type of filing with application body and request in character coded format (XML) CHF 300 Filing-31

32 Modes of payment in case of RO/IB e-payment by credit card by bank transfer to WIPO's bank account (Swiss francs, US dollars or euro) by debit from a current account established with WIPO (Swiss francs only) by transfer to WIPO's postal account (Swiss francs only) by check made payable to the World Intellectual Property Organization (Swiss francs, US dollars or euro) Filing-32

33 Calculation of fees for PCT application filed by nationals/residents of Iran Example 1 settings: application has 30 sheets, RO/IB, ISA/RU, facilities for fees reduction have been used (e-filing) For natural persons: filing fees: 103CHF RUB = 660 EUR For legal entities: filing fees: 1 030CHF + 100CHF RUB = EUR Example 2 settings: application has 30 sheets, RO/IR, ISA/EP For natural persons: filing fees: 133CHF +? EUR = EUR For legal entities: filing fees: 1 330CHF +? EUR = EUR Filing-33

34 Fee reduction for PCT application on national phases Expenses of applicant for the PCT filing under the example 1 were 660 EUR (previous slide) Entries into national phases with EPO and USPTO Full amount of searching fee Fee reduction EPO EUR 100% (ISA/EP) 190 EUR (ISA/RU) USPTO 620 USD 130 USD Filing-34 Summary national patent fees savings only for two Offices are about 300 EUR

35 Processing PCT application: International phase Filing-35

36 Inventions are the objects of International Searching Authorities (ISA) transmit Reports 2 to International Preliminary Examining Authorities (IPEA) PCT International Applications are filed with Receiving Offices (national, regional or international) transmit applications to International Bureau publishes communicates to grant Designated Offices 3 (national and/or regional patent Offices) Patents Months from Priority Date 1 Filing-36 PCT International Applications Applications filed with Patent Offices 1 (Priority Date) PCT International Applications filed with Receiving Offices (International Filing Date) Source: World Intellectual Property Organization (WIPO) Transmittals of ISR & Written Opinions International Phase Publications of PCT International Applications Applicants demand IPRP II (optional) Transmittals of IPRP II (optional) PCT National Phase Entries (where applicants seek protection) National Phase and/or regional phase 1 Generally, applicants first file a national or regional patent application with their patent Office, and within 12 months from priority date, file a PCT international application at a receiving Office. 2 ISAs transmit International Search Reports (ISRs) & the Written Opinions / IPEAs transmit International Preliminary Reports on Patentability II (IPRP II). 3 Called Elected Offices for Applicants having filed a demand for IPRP II.

37 General information Communication with applicants PCT International Authorities communicate with applicants by means of PCT Forms sent by mail and/or Modes of communication: regular mail services ing private file inspection (epct) Filing-37

38 Time limits computation Kinds of time limits: times limits that start on the priority date (international publication, national phase entry...) times limits that start on the international filing date (fee payment) periods that start on the date of a document emanating from Authority (invitations) Date of issue of a document Date of actual receipt by applicant Date of mailing Time limit response set in invitation 7 days rule Rule 80.6 Actual time that applicant has for response 5 days rule Rule 82.1(a) Filing-38

39 Special procedures Related to RO withdrawals incorporation by reference priority right restoration correction/addition of priority claims Related to ISA protest procedure rectification of obvious mistakes late furnishing of sequence listing Related to IB withdrawals amendments under Article 19 recording of changes in the request (Rule 92bis) Related to IPEA amendments under Article 34 protest procedure rectification of obvious mistakes Filing-39

40 Processing PCT application: National phase Filing-40

41 Acts to be performed by the Applicant Payment of the national fee Translation of the international application (description, claims, abstract, text matter of drawings) as originally filed** ONLY under Chapter I: translation of claims as amended (and any statement) under Article 19** Applicant ONLY under Chapter II: translation of the annexes to the international preliminary report on patentability (Chapter II)** In case of early entry into the national phase (i.e., before communication of copy of the international application by IB), copy of the international application** Fulfillment of certain special requirements under Rule 51bis (for example, appointment of agent, inventor s oath or declaration, assignment, etc.) ** ** For further details on the requirements and time limits applicable in a particular designated/elected Office, see the relevant national chapter in the PCT Applicant s Guide, National Phase Designated/ Elected Office Filing-41

42 Earlier national phase entry Filing-42 Applicant can enter the national phase at any time after filing Early national phase entry can be made in different Offices at different times Early national processing can only begin at the specific request of the applicant Once national phase processing has commenced in a country, the national phase application is not affected by: withdrawal of the international application withdrawal of priority claim in the international application If the national phase is entered before publication, a copy of the international application must be provided to the designated Office No national or regional Office can require entry before 30 months from priority

43 National Phase Entry Month 30 Accelerated Examination/PPH Based on case needs, accelerated national processing and examination is available in some countries PCT/PPH programs are in place is some countries if the appropriate ISA/IPEA is utilized Some states have national procedures for accelerated examination EPO (PACE*) no reason necessary GB will accept request based on favorable PCT results CA accepts request based on a variety of reasons Other states have accelerated programs check local agents Filing-43 * See for more details applicants/html/e/ga_e_i_9.html

44 National phase: Deferred examination Requesting examination in deferred examination countries (DE, RU...), a decision needs to be made regarding the best time to request examination. It can be done earlier if faster processing is desired, or it can be deferred to help delay costs. Regular examination request at entry Filing-44

45 Filing-45 Examples of special requirements under Rule 51bis.1 (1) Oath or declaration by the inventor (US only) Assignment documents (of the priority rights or of the application) Translation of the priority document may only be required (Rule 51bis.1(e)): where the validity of the priority is relevant to the determination whether the invention is patentable in cases of incorporation by reference Appointment of local agent and submission of power of attorney Translation or other documents relating to the international application in more than one copy Certified translation of the international application (only where the Office may reasonably doubt the accuracy of the translation)

46 Filing-46 National requirements simplified for PCT applications (1) Priority document The applicant does not need to furnish the priority document since the IB transmits copies to the DO/EOs If the DO/EO did not receive a copy of the priority document from the IB, it must request a copy from the IB (not from the applicant) Drawings If the drawings do not contain any text matter to be translated, a simple copy of the drawings as filed is required by a few DOs If the drawings contain text matter to be translated, a set of drawings containing the translated text matter needs to be furnished

47 National requirements simplified for PCT applications (2) No legalized or certified translation of the international application Otherwise, a simple translation is required A few Offices (such as, AU, GB, IN, NZ, SG, ZA) require a "verified" translation No special form required (but strongly recommended) for entry into national phase Filing-47

48 Filing-48 Thank you for your attention!