1801 Basic Patent Cooperation Treaty (PCT) Principles
|
Section Frequency Chart
| Key |
|
|||||
| 1801 |
I. MAJOR CONCEPTS OF THE PCT
The PCT also provides for the establishment of an international search report and written opinion at 16 months from the priority date and publication of the international application after 18 months from the priority date.
Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries.
For any countries remaining whose national laws are not compatible with the 30 month period, the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date.
The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT.
- It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement).
The filing, search and publication procedures are provided for in Chapter I of the PCT.
- Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.
In most instances a national U.S. application is filed first.
- An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.
II. RECEIVING OFFICE (RO)
The international application (IA) must be filed in the prescribed receiving Office (RO).
The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals.
The International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals.
- The receiving Office functions as the filing and formalities review organization for international applications.
- International applications must contain upon filing the designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality.
Where a priority claim is made, the date of the earliest-filed application whose priority is claimed is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application.
- Where no priority claim is made, the international filing date will be considered to be the “priority date” for timing purposes.
The international application is subject to the payment of certain fees within 1 month from the date of receipt.
III. INTERNATIONAL SEARCHING AUTHORITY (ISA)
The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications and to issue a written opinion which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded.
An international search report (ISR) and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date).
- Copies of the international search report and prior art cited will be made available to the applicant by the ISA
Once the international search report and written opinion are established, the ISA transmits one copy of each to the applicant and the International Bureau, and international processing continues before the International Bureau.
- If a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.
IV. INTERNATIONAL BUREAU (IB)
The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty.
- The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.
If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, or requested the International Bureau to obtain a copy of the earlier application from a digital library, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date.
The applicant has normally 2 months from the date of transmittal of the international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau.
The International Bureau will then normally publish the international application along with the search report and any amended claims at the expiration of 18 months from the priority date.
- For applications filed before July 1, 2014, former PCT Rule 44ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date.
- For applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date.
V. DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)
The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I.
- Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.
Effective April 1, 2002, a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date.
If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date in one or more countries where the 30 month time limit as amended does not apply, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority (IPEA) within 19 months of the priority date.
Those states in which the Chapter II procedure is desired must be “elected” in the Demand.
The Demand must be made prior to the expiration of whichever of the following periods expires later:
- (A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion; or
- (B) 22 months from the priority date.
VI. INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA)
The International Preliminary Examining Authority (IPEA) normally starts the examination process when it is in possession of:
- (A) the Demand;
- (B) the amount due;
- (C) a translation, if the applicant is required to furnish a translation;
- (D) either the international search report or a notice of the declaration by the International Searching Authority (ISA) that no international search report will be established; and
- (E) the written opinion.
The written opinion of the ISA is usually considered the first written opinion of the IPEA unless the IPEA has notified the International Bureau that written opinions established by specified International Searching Authorities shall not be considered a written opinion for this purpose.
The IPEA establishes the international preliminary examination report (entitled “international preliminary report on patentability”), which presents the examiner’s final position as to whether each claim is “novel,” involves “inventive step,” and is “industrially applicable” by 28 months from the priority date.
- A copy of the international preliminary examination report is sent to the applicant and to the International Bureau.
- The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.
The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office; however, some elected Offices provide a longer period to complete the requirements.
» 1803 Reservations under the PCT taken by the United States of America
