Introduction to the PCT System

Transcription

1 1 Introduction to the PCT System The traditional patent system 1. The traditional patent system requires the filing of individual patent applications for each country for which patent protection is sought, with the exception of the regional patent systems established by international Organizations such as the African Intellectual Property Organization (Organisation africaine de la propriété intellectuelle OAPI) system, the Harare Protocol system established in the framework of the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Organization and the European Patent Organisation. Under the traditional Paris Convention route, the priority of an earlier application can be claimed for applications filed subsequently in foreign countries but such later applications must be filed within 12 months of the filing date of the earlier application. This involves for the applicant the preparation and filing of patent applications for all countries in which he is seeking protection for his invention within one year of the filing of the first application. This means expenses for translation, patent attorneys in the various countries and payment of fees to the patent Offices, all at a time at which the applicant often does not know whether he is likely to obtain a patent or whether there is a market for the invention. 2. Filing patent applications under the traditional system means that every single patent Office with which an application is filed has to carry out a formal examination of every application filed with it. Where patent Offices examine patent applications as to substance, each Office has to make a search to determine the state of the art in the technical field of the invention and has to carry out an examination as to patentability. 3. The principal difference between the traditional national patent system and the regional patent systems such as those mentioned above is that a regional patent is granted by one patent Office for several States. Otherwise, the procedure is the same, and the explanations given in the preceding two paragraphs are equally valid. History of the PCT 4. The Executive Committee of the International (Paris) Union for the Protection of Industrial Property invited, in September 1966, BIRPI (the predecessor of ) to undertake a study of solutions to reduce the duplication of the effort both for applicants and national patent Offices. In 1967, a draft of an international treaty was prepared by BIRPI and presented to a Committee of Experts. In the following years, a number of meetings prepared revised drafts and a Diplomatic Conference held in Washington in June 1970 adopted a treaty called the Patent Cooperation Treaty. The Patent Cooperation Treaty or PCT entered into force on 24 January 1978, and became operational on 1 June 1978, with an initial 18 Contracting States. At present, 126 Contracting States had adhered to the PCT, a significant increase indicative of interest in the implementation of the Treaty. 5. The filing of international applications under the PCT commenced on 1 June For statistics in relation to the PCT, see the PCT website at What is the PCT? 6. As its name suggests, the Patent Cooperation Treaty is an agreement for international cooperation in the field of patents. It is often spoken of as being the most significant advance in international cooperation in this field since the adoption of the Paris Convention itself. It is, however, largely a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT does not provide for the grant of international patents : the task of and responsibility for granting patents remains exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the designated Offices ). The PCT does not compete with but, in fact, complements the Paris Convention. Indeed, it is a special agreement under the Paris Convention open only to States which are also party to the Paris Convention

2 2 Principal objectives of the PCT 7. The principal objective of the PCT is to simplify and to render more effective and more economical in the interests of the users of the patent system and the Offices which have responsibility for administering it the previously established means of applying in several countries for protection for inventions. 8. Before the introduction of the PCT system, virtually the only means by which protection of an invention could be obtained in several countries was to file a separate application in each country; these applications, each being dealt with in isolation, involved repetition of filing and the work of examination in each country. To achieve its objective, the PCT: establishes an international system which enables the filing, with a single patent Office (the receiving Office ), of a single application (the international application ) in one language having effect in each of the countries party to the PCT ( designated States ); provides for the formal examination of the international application by a single patent Office, the receiving Office; subjects each international application to an international search and examination which results in a report citing the relevant prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable and an opinion as to whether the claimed invention meets certain international criteria of patentability; the report and the opinion are made available first to the applicant and the report is later published; provides for centralized international publication of international applications with the related international search reports, as well as their communication to the designated Offices; and provides the option of an international preliminary examination of the international application which gives to the Offices that have to decide whether or not to grant a patent, and to the applicant, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability. 9. The procedure described in the preceding paragraph, comparing it with the traditional procedure, is illustrated by timelines which are shown and explained in a subsequent chapter. It is commonly called the international phase of the PCT procedure, whereas one speaks of the national phase to describe the last part of the patent granting procedure which, as explained above, is the task of the designated Offices. 10. Patent Offices have been struggling for years with heavy work loads (leading to delays) and with questions of how best to allocate resources so as to ensure that the patent system yields the greatest return from the available manpower. Under the PCT system, by the time the international application reaches the designated Office, it has already been examined as to form by the receiving Office, searched by the International Searching Authority and possibly examined by an International Preliminary Examining Authority, thus providing the national patent Offices with the important benefit of reducing their work loads since they have the benefit of these international phase centralized procedures and thus need not duplicate those efforts. 11. Further main objectives of the PCT are to facilitate and accelerate access by industries and other interested sectors to technical information related to inventions and to assist developing countries in gaining access to technology

3 3 Traditional patent systems (months) 0 12 File application locally File applications abroad Intro 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 at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI PCT system Local patent application followed within 12 months by international application under the PCT, claiming Paris Convention priority, with national phase commencing at 30 months: one set of formality requirements international search international publication international preliminary examination international application can be put in order before national phase translations and national fees required at 30 months, and only if applicant wishes to proceed Intro Few States continue to apply a 20-month time limit where no demand for international preliminary examination has been filed before the expiration of 19 months from the priority date (for an updated list of those States, see Notification of incompatibility on s Internet site at

4 4 The PCT System Chapter I (months) 0 File local application 12 File PCT application International publication or International File demand search report and written opinion of the ISA For all designated States to which modified Article 22(1) does not yet apply, the applicant must decide whether to file demand by 19 months or enter national phase by 20 months If the applicant wants to receive an international preliminary report on patentability (Chapter II), he must file a demand Intro 3 A written opinion of the ISA will only be established for international applications filed on or after January 1, International preliminary examination Chapter II Enter national phase Enter national phase Non-applicability of modified (30 month) time limit under Article 22(1) The Offices of the following States have notified the International Bureau that they will not apply the 30 month time limit under Chapter I, as of 1 April 2002, for as long as modified Article 22(1) is not compatible with their national law (6 Offices situation as of 1 December 2004): AU Australia 1 GB United Kingdom 1 SE Sweden BG Bulgaria 4 HR Croatia 1 SG Singapore12 BR Brazil 14 HU Hungary 6 SK Slovakia 2 CH Switzerland IL Israel 5 TZ United Republic of Tanzania CN China 7 JP Japan 3 UG Uganda DK Denmark11 KR Republic of Korea 8 YU Serbia and Montenegro 15 EE Estonia 9 LU Luxembourg ZA South Africa 10 FI Finland 16 NO Norway 13 ZM Zambia 1 Notification withdrawn effective 1 April Notification withdrawn effective 1 August Notification withdrawn effective 1 September Notification withdrawn effective 9 July Notification withdrawn effective 4 October Notification withdrawn effective 1 January Notification withdrawn effective 1 February Notification withdrawn effective 12 March Notification withdrawn effective 1 April Notification withdrawn effective 23 April Notification withdrawn effective 1 July Notification withdrawn effective 1 January Notification withdrawn effective 1 February Notification withdrawn effective 30 April Notification withdrawn effective 1 January Notification withdrawn effective 1 January 2005 Where this State has been designated for the purposes of a European patent, the applicable time limit before the EPO, as of 2 January 2002, is 31 months Where this State has been designated for the purposes of an ARIPO patent, the applicable time limit before ARIPO, as of 1 April 2002, is 31 months Intro If no demand for international preliminary examination is filed before the expiration of 19 months in respect of above States, the national phase will have to be entered before the expiration of 20 or 21 months from the priority date

5 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 application international search and written opinion of the ISA international publication and international preliminary 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. Intro 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 as are other international conventions in the field of industrial property, such as the Paris Convention. Intro

6 6 PCT Contracting States (126) States designated for regional protection and also, except where otherwise indicated, national protection AP ARIPO Patent EA Eurasian Patent EP European Patent OA OAPI Patent BW Botswana AM Armenia AT Austria BF Burkina Faso GH Ghana AZ Azerbaijan BG Bulgaria BJ Benin GM Gambia BY Belarus BE Belgium CF Central African KE Kenya KG Kyrgyzstan CH Switzerland Republic LS Lesotho KZ Kazakhstan CY Cyprus CG Congo MW Malawi MD Republic of CZ Czech Republic CI Côte d Ivoire MZ Mozambique Moldova DE Germany CM Cameroon NA Namibia DK Denmark RU Russian GA Gabon SD Sudan EE Estonia Federation GN Guinea SL Sierra Leone ES Spain SZ Swaziland TJ Tajikistan GQ Equatorial Guinea FI Finland TZ United Republic TM Turkmenistan FR France GW Guinea-Bissau of Tanzania GB United Kingdom ML Mali UG Uganda GR Greece MR Mauritania ZM Zambia HU Hungary NE Niger ZW Zimbabwe IE Ireland SN Senegal IS Iceland 1 TD Chad IT Italy TG Togo Regional patent only LI Liechtenstein LT Lithuania 1 For international applications filed on or after 2 LU Luxembourg 1 November 2004 MC Monaco 2 For international applications filed on or after NL Netherlands 1 December 2004; the extension agreement for PL Poland European patent applications and patents PT Portugal continues to apply to all international and European RO Romania applications filed prior to 1 December 2004, as well SE Sweden as to all European patents granted in respect of SI Slovenia Intro 6 such applications SK Slovakia TR Turkey AE United Arab Emirates AG Antigua and Barbuda AL Albania AU Australia BA Bosnia and Herzegovina BB Barbados BR Brazil BZ Belize CA Canada CN China CO Colombia CR Costa Rica CU Cuba DM Dominica DZ Algeria EC Ecuador EG Egypt GD Grenada GE Georgia HR Croatia Intro PCT Contracting States (126) (continued) States designated for national protection only except where otherwise indicated ID Indonesia IL Israel IN India JP Japan KM Union of the Comoros KP Democratic People s Republic of Korea KR Republic of Korea LC Saint Lucia LK Sri Lanka LR Liberia LV Latvia MA Morocco MG Madagascar MK The former Yugoslav Republic of Macedonia MN Mongolia MX Mexico NG NIGERIA (as from 8 May 2005) NI Nicaragua NO Norway NZ New Zealand OM Oman PG Papua New Guinea PH Philippines SC Seychelles SG Singapore SM San Marino SY Syrian Arab Republic TN Tunisia TT Trinidad and Tobago UA Ukraine US United States of America UZ Uzbekistan VC Saint Vincent and the Grenadines VN Viet Nam YU Serbia and Montenegro ZA South Africa Extension of European patent possible. Note that for Bosnia and Herzegovina (BA) extension of European patent is possible for international applications filed on or after 1 December 2004; for Serbia and Montenegro (YU) extension of European patent is possible for international applications filed on or after 1 November 2004