PCT : Patent Law Outline

February 13, 2023

PCT

Overview
1. Basics of PCT
  1. A multilateral treaty between 130 contracting states, entered into force in 1978.
  2. Administered by International Bureau (IB) of the World Intellectual Property Organization (WIPO)
  3. Permits a national/resident of any contracting state to file one patent application that will have effect in multiple states
  4. Gives applicant up to 30 months to evaluate and pursue further patent application
2. Three stages of PCT: overview
  1. Chapter I Processing: filing, search and publication
    1. Applicant files an International Application (IA) in the Receiving Office (RO) or IB.
    2. Claimed invention is searched by an applicant-selected International Search Authority (ISA).
    3. ISA issues an International Search Report (ISR) and a written opinion (WO) and mails them to the applicant.
    4. IB publishes IA and ISR (but not WO).
  2. Chapter II (optional) processing: preliminary examination
    1. Applicant may elect for preliminary examination or skip this stage.
    2. International Preliminary Examination (IPE) is conducted by the applicant-selected International Preliminary Examining Authority (IPEA).
    3. IPEA issues an International Preliminary Report on Patentability (IPRP) [aka International Preliminary Examination Report (IPER)].
  3. National Stage: must enter or PCT application expires
    1. PCT application undergoes examination in each national or regional patent office and is nationalized by the applicant.
    2. Without entering national stage, the PCT application expires.
Chapter I: IA and ISR
1. International Application (IA) MPEP1810
  1. Elements required to receive a f/d: if defective, RO will invite applicant to correct, but f/d will be the date when the correction is received.
    1. Indication that at least one applicant is a national or resident of a PCT contracting state: if IA is filed in wrong RO, it will be forwarded to IB without affecting the f/d.
    2. IA must be in the prescribed language (i.e., Arabic, Chinese, English, French, German, Japanese, Russian and Spanish): if IA is not filed in English to US/RO, it will be forwarded to IB without affection the f/d.
    3. An indication that the application is an IA
    4. Before 2004-01-01: designation of a contracting state; after 2004-01-01: automatic designation
    5. Name of the applicant (applicant may be other than the inventor)
    6. A description
    7. One or more claims
  2. Other required elements, but not necessary to establish a f/d: may be submitted later
    1. Request that IA be processed, including:
      1. Title of the invention
      2. Identity of the applicant and the agent (if any): for US, the applicant must be the inventor!
      3. Priority claim (if any)
      4. Applicant’s choice of ISA
      5. Signature of applicant or agent
      6. For US: declaration of inventorship
    2. Abstract
    3. Drawings (if required)
    4. Fee: may pay within 30 days; RO will notify if fee is not paid
    5. Translation (if necessary)
2. International search for prior art
  1. If the invention lacks unity of invention, then applicant will pay additional search fee: similar to restriction requirement in US application. MPEP1850
  2. ISA conducts international search: in US, either PTO or EPO may search
    1. Prior art’s broad encompassment: everything made public anywhere in the world
    2. Reference date: IA’s f/d (not DOI)
    3. Patentability criteria: novelty, inventive step (nonobviousness) and industrial applicability (utility)
    4. No search if IA is too defective to preclude meaningful search
  3. ISA issues ISR
    1. Mailed to applicant 16 months from IA f/d or the earliest priority date
    2. Only for identifying prior art
    3. Records results of search, such as citation of relevant documents
    4. Does not contain opinion, reasoning, argument or explanation
    5. Indicates examiner’s approval or amendments of title or text of abstract, and selection of representative drawings
  4. ISA issues WO: mailed to applicant with ISR MPEP1845
    1. Contains opinions and reasons re the invention’s novelty, inventive step and industrial applicability
    2. Invites applicant to reply and amend
  5. Applicant may elect to amend the claims only MPEP1853
    1. Within 2 months from ISR mailing date
    2. Only once during Chapter I processing
    3. Timely received amendments are published along with IA/ISR
  6. IB publishes IA and ISA (but not WO), along with timely received amendments MPEP1857
    1. 18 months from IA f/d or earliest priority date, or earlier at the applicant’s request
    2. Publication may be delayed by withdrawing priority claim
    3. To avoid publication, applicant may withdraw IA or priority claim within 17.5 months from IA f/d or earliest priority date.
    4. WO is not available to public until after 30 months from IA f/d or priority date.
3. If the US is the only contracting/designated state in a PCT application, the IA will not be published automatically by IB at 18 months. (reason: some US applications are not published under applicant’s non-publication request)
Chapter II: IPE
1. Applicant demands for IPE
  1. Timeline:
    1. Within 3 months from ISR/WO date or “no search” declaration (by ISA due to too many IA defects), whichever is later, or
    2. 22 months from priority date
  2. Demand made to desired IPEA: in US, demand in English to
    1. PTO: may serve as IPEA for US nationals/residents and other countries listed in MPEP1865 (e.g., Brazil, India, Israel, etc.)
    2. EPO if EPO did the international search
  3. Applicant pays IPE fee
    1. Within prescribed time, before IPEA sends “invitation” to pay examination fee MPEP1867
    2. Untimely payment will incur late fee
    3. If invention lacks unity of invention, then additional fee is required (similar to restriction)
  4. Applicant has one more chance to amend before IPE begins
    1. Timeline: within 2 months from WO
    2. May amend description and drawings besides claims
    3. May also include explanation (e.g., how amendments counters an inventive step issue raised in ISA’s WO)
    4. No new matter is allowed.
  5. IPEA conducts IPE MPEP1878, 1879
    1. US IPEA considers ISA’s WO to be IPEA’s first written opinion.
      1. No further written opinion is issued unless applicant files persuasive argument against ISA’s negative opinion
      2. If US IPEA issues further written opinion, applicant may reply with amendments and/or arguments within 2 months, but reply must not contain new matter.
    2. Applicant may request interview with IPEA
      1. Once as a matter of right, additional interviews at examiner’s discretion
      2. Request made between date of WO and IPRP
      3. Interview must be made of record
  6. IPEA issues IPRP (aka IPER)
    1. Timeline (for IA filed on or after 2004-01-01): the later of
      1. 28 months from IA f/d or priority date, or
      2. 6 months from start of IPE, or
      3. 6 months from receipt of necessary translation.
    2. Content:
      1. For each claim, state whether novelty, inventive step and industrial applicability is satisfied:
        Cite any relevant documents
        Identify all entered amendments
        Give reasons for non-satisfaction (similar to objection and rejection)
      2. Remarks on unity of invention if necessary
      3. Must not give any opinion re patentability according to any national law (since PCT standard may be different from countries)
National Stage
1. Not extendable: must enter national stage within 30 months from IA f/d or priority date (effective for any PCT application entering national stage after 2002-4-1, regardless of its PCT filing date)
  1. Abandoned IA may be revived for unavoidable or unintentional abandonment.
2. Parts required to establish entry:
  1. Payment of national fee
  2. Copy of IA, unless previously sent to or originally filed in PTO
  3. Not effective: fax, certificate of mailing
3. May be filed later: oath or declaration, necessary translation, preliminary amendment (if desired)
4. Unity of invention criteria: carried through to national stage examination, unless and until
  1. RCE, continuation or divisional application is filed, then criteria shifts to US restriction practice
Additional points:
1. Priority date: may claim up to 12 months before IA f/d
2. Method of filing IA in US/RO
  1. USPS express mail
  2. Hand-carry
  3. PCT-Safe (electronic)
  4. Fax is unacceptable!
3. IA: parts to US/RO
  1. Transmittal letter
  2. “Request”
    1. Must identify all applicants/inventors (US requires applicant = inventor), but signature from only one applicant/inventor is sufficient for execution
    2. Country designation: automatic after 2004-01-01
    3. Optional: may include US-acceptable declaration
  3. Fee calculation: pay within 30 days, or RO will send notice of insufficient fee
  4. Power of attorney: this form/requirement is waived by US
  5. Description, claim, necessary drawings and abstract: A4 size paper for all sheets
4. IPE demand to US IPEA method: fax is acceptable!
5. IPE demand: parts to US IPEA
  1. “Demand”
    1. Country election: automatic after 2004-01-01
  2. Later: voluntary amendment
    1. Without voluntary amendment ISA’s WO will be “repurposed” as IPRP
6. US nationalization method to PTO: fax is unacceptable!
7. US nationalization: parts to PTO
  1. Transmittal letter
8. To withdraw IA:
  1. As of 2004-01-01: must be signed by all applicants (or agents)
9. Even if applicant does not choose Chapter II IPE, IB still “established” WO (along with any “informal comment”) as IPRP at the end of month 28 from IA f/d or priority date, but this information is made public only after expiration of month 30.

PCT : Patent Law Outline

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