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Patent Cooperation Treaty (PCT) Workshop: Organized by WIPO in Cooperation With The GCC Patent Office
Patent Cooperation Treaty (PCT) Workshop: Organized by WIPO in Cooperation With The GCC Patent Office
Patent System
Riyadh
Dr. Ali Jazairy May 25 to 26, 2016
Senior Counsellor
PCT International Cooperation Division
Patents and Technology Sector, WIPO
Speaker Outline The International
Patent System
Enter
national
International
(months) phase
publication
PCT 0 12 16 18 22 28 30
The International
Patent System
AJ presentation-6
27-28.05.2015
The PCT system
Chapter I
20 30 Enter
national
phase
International
(months) publication
0 12 16 18 19
Chapter II
The International
Patent System
AJ presentation-7
27-28.05.2015
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 The International
Patent System
AJ presentation-8
27-28.05.2015
General remarks on the PCT system (2)
The International
Patent System
AJ presentation-9
27-28.05.2015
PCT Contracting States (148)
States designated for regional protection and also, unless otherwise indicated, national protection
EA Eurasian Patent EP European Patent
AM Armenia AL Albania1 LI Liechtenstein
AZ Azerbaijan AT Austria LT Lithuania
BY Belarus * BE Belgium LU Luxembourg
KG Kyrgyzstan BG Bulgaria * LV Latvia
KZ Kazakhstan CH Switzerland * MC Monaco
RU Russian Federation * CY Cyprus MK The former Yugoslav
TJ Tajikistan CZ Czech Republic Republic of Macedonia1
TM Turkmenistan DE Germany * MT Malta
DK Denmark * NL Netherlands
EE Estonia NO Norway
ES Spain PL Poland
FI Finland PT Portugal
* FR France RO Romania
GB United Kingdom RS Serbia1
* GR Greece SE Sweden
HR Croatia1 * SI Slovenia
HU Hungary SK Slovakia
* IE Ireland SM San Marino
IS Iceland TR Turkey
* IT Italy
* Regional patent only
The International
1 Extension agreement continues to apply to applications filed before 1 January 2008 (for Patent System
AJ presentation-10 HR), 1 January 2009 (for MK), 1 May 2010 (for AL) or 1 October 2010 (for RS)
27-28.05.2015
PCT Contracting States (148) (continued)
States designated for regional protection and also, unless otherwise indicated, national protection
PCT Timeline
PCT TIMELINE
Request for
supplementary international
search (optional)
International publication
National/Regional/
International search
PCT filing/
report (ISR) and
(priority date) Supplementary international
written opinion (WO)
of ISA search report (SISR)
(months) 0 12 16 18 19 22 28
The International
Patent System
AJ presentation-15
27-28.05.2015
Non-applicability of time limit of 30 months
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:
LU Luxembourg
TZ United Republic of Tanzania
UG Uganda
Where one of these States has been designated for the purposes of
a regional patent, the applicable time limit is 31 months
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
The International
Patent System
AJ presentation-16
27-28.05.2015
The International
Patent System
www.wipo.int/pct/en/texts/reservations/res_incomp.html)
Patent System
AJ presentation-18
27-28.05.2015
Minimum requirements for an
international filing date (Article 11(1)) (1)
■ The application must contain at least:
an indication that it is intended as an international
application
a request which has the effect of making all possible
designations (Article 4 and Rules 3 and 4.9)
the name of the applicant (Rule 4.5)
a description (Rule 5)
a claim (Rule 6)
The International
Patent System
AJ presentation-19
27-28.05.2015
Minimum requirements for an
international filing date (Article 11(1)) (2)
■ Note that if:
none of the applicants have the right to file with the
receiving Office for reasons of residence or
nationality (Rules 18 and 19); or
the application is filed in a language not accepted by
the receiving Office for that purpose (Rule 12.1),
the receiving Office will transmit the application to the
receiving Office of the International Bureau for further
processing (Rule 19.4)
The International
Patent System
AJ presentation-20
27-28.05.2015
Not required for obtaining an
international filing date
■ payment of fees
■ applicant’s signature
■ title of the invention
■ abstract
■ drawings (for missing drawings, see Article 14(2) and
Rule 20.5)
■ translation into language of search or publication
The International
Patent System
AJ presentation-21
27-28.05.2015
The PCT applicant (Article 9 and Rule 18)
■ The applicant may be a natural person (e.g. the
inventor) or a legal entity (e.g. company, university,
NGO) (also for the US since 16 September 2012)
■ It is possible to indicate different applicants for different
designated States (Rule 4.5(d))
■ At least one of the applicants must be a national
or resident of a PCT Contracting State (Rule 18.3)
The International
Patent System
AJ presentation-22
27-28.05.2015
Where to file the international application
(Rule 19)
■ with a national Office
■ with the International Bureau of WIPO, or
■ with a regional Office
The International
Patent System
AJ presentation-23
27-28.05.2015
Choice of receiving Office
Considerations:
■ Accepted filing languages
■ Choice of International Searching Authorities
■ Criteria for restoration of the priority right and fee to be paid
■ Possibility to incorporate by reference
■ Acceptance of pre-conversion files
The International
Patent System
AJ presentation-24
27-28.05.2015
Which ISA(s) is (are) competent (Rule 35)
■ The competent ISA(s) is (are) specified by the RO
■ If more than one is specified by the RO, the applicant has the
choice:
in making that choice, the applicant must take into account
the language(s) accepted by the ISA (a translation of the
international application for the purposes of international
search may be required in certain cases (Rule 12.3))
■ If the international application is filed with RO/IB, the
competent ISAs will be those which would have been
competent if the international application had been filed with
(any of) the national or regional Office(s) which, on the basis of
applicant's nationality or residence, could be a competent RO
■ Choice of ISA to be indicated in the request (Box No. VII)
The International
Patent System
AJ presentation-25
27-28.05.2015
The International
Patent System
The International
Patent System
AJ presentation-28
27-28.05.2015
Serviced States & Prior Agreement
International Searching Contracting States for which the Languages and Kinds Is prior agreement with the
Authority (ISA)/ ISA/IPEA will carry out international of Application ISA/IPEA needed before it can be
International Preliminary search/preliminary examination specified?
Examining Authority
(IPEA)
Austrian Patent Office Any developing country in conformity English, French, Agreement between Austrian Patent
(ISA/IPEA/AT) with the established practice of the United German, Hungarian, Office and your Office is required
Nations, in accordance with the Russian
obligations of the Authority within the
framework of the European Patent
Organisation.
State Intellectual Property China, Angola, India, Kenya, Liberia, Chinese, English Agreement by the State Intellectual
Office of the People’s Thailand, Turkey, Ghana, Zimbabwe, Property Office of the People’s
Republic of China India; and any State that the Authority Republic of China is required
(ISA/IPEA/CN) will specify
Egyptian Patent Office Open to All States, and in practice mainly Arabic, English Yes
(ISA/IPEA/EG) selected by Arab States
European Patent Office Any Contracting State (i)English, French, No, specification in PCT
(ISA/IPEA/EP) German, Dutch3 Questionnaire is sufficient
(ii)as an IPEA the
EPO may act only if
the search is or has
been performed by EP,
AT, FI, XN, ES and
SE
United States Patent and United States of America, Bahrain, English Agreement with the United States
Trademark Office Barbados, Brazil, Chile, Dominican Patent and Trademark Office is
(ISA/IPEA/US) Republic, Egypt, Guatemala, India, Israel, required
Mexico, New Zealand, Peru, Philippines,
Saint Lucia, South Africa, Thailand,
Trinidad and Tobago, and any State that
the Authority will specify
The International
Patent System
AJ presentation-29
27-28.05.2015
ISA / IPEA Statistics
The International
Patent System
AJ presentation-30
27-28.05.2015
The International
Patent System
The International
Patent System
AJ presentation-32
27-28.05.2015
Advantages for PCT Accession
The International
Patent System
AJ presentation-33
27-28.05.2015
90% Fee Reductions (Proposed)