Introduction to the Cooperation Treaty

Michael Neas International Patent Legal Administration (IPLA) United States Patent and Trademark Office April 2015

April 2015 Patent Cooperation Treaty 1 Objectives • To understand the structure and function of the Patent Cooperation Treaty (PCT) – International and National Stages • To understand duties and obligations under the Treaty – IB (International Bureau) – RO (receiving Office) – ISA (International Searching Authority) – SISA (Supplementary International Searching Authority) – IPEA (International Preliminary Examining Authority) – DO/EO (Designated Office/Elected Office)

April 2015 Patent Cooperation Treaty 2 The Patent Cooperation Treaty

• A United Nations Treaty – signed June 1970 – became operational June 1978 – administered by the International Bureau (IB) • of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland

April 2015 Patent Cooperation Treaty 3 International Patent?

• An international application (IA) is filed under the PCT but… – there is no “international patent” – the PCT functions as a filing system – the IA must still be prosecuted • in each national or regional office where patent protection is desired

April 2015 Patent Cooperation Treaty 4 PCT Benefits for Applicants • Simplifies the process of filing foreign applications – one set of formality requirements – establishes a filing date in all PCT Contracting States • Postpones costs – for filing in the national/regional offices – translation fees, filing fees, attorney fees • Provides – an early indication of and – a written opinion as to the , inventive step and industrial applicability of the claimed invention • Gives extra time for assessment of commercial viability in designated States

April 2015 Patent Cooperation Treaty 5 PCT Benefits for Offices

• Provides every regional and national patent Office, where protection is sought, the benefit of – an International Search Report (ISR) and – Written Opinion of the International Searching Authority (WOISA) – optionally, a Supplementary International Search Report (SISR) • by a Supplementary International Searching Authority – optionally, an International Preliminary Report on Patentability (Chapter II) – IPRP (CH II) • by an International Preliminary Examining Authority (IPEA)

April 2015 Patent Cooperation Treaty 6 PCT Contracting State

• A country which is a signatory to the PCT

• Eighteen (18) Contracting States in 1978

• Currently 148 Contracting States

April 2015 Patent Cooperation Treaty 7 PCT Contracting States

April 2015 Patent Cooperation Treaty 8 PCT World Map (148 Contracting States on 03 August 2013)

April 2015 Patent Cooperation Treaty 9 International Applications Filed

• In 2013, estimated 205,300 PCT international applications were filed ‒ 57,793 filed in US (28.1% of total PCT filings) • Since the inception of the PCT system, over 2.5 million international applications have been filed worldwide

April 2015 Patent Cooperation Treaty 10 Applications Filed at USPTO

Fiscal Year 2008 2009 2010 2011 2012 2013 2014 International Applications (RO/US) 54488 47572 45701 48285 52417 56226 62697 U.S. National Phase Applications 57345 57879 61587 65463 67573 73488 78213

• In 2014, PCT Filings in RO/US increased 11.5% from 2013 • National phase application filing increased 6.4%

April 2015 Patent Cooperation Treaty 11 The International Application • A single application – filed together with a Request • by a resident/national of a PCT Contracting State – filed in one language – filed in one patent Office • the receiving Office (RO) • usually the applicant's home patent Office – treated as a national application • in each designated State as of the international filing date • Formalities in compliance with the PCT – must be accepted during national phase

April 2015 Patent Cooperation Treaty 12 Paris Convention Filing Timeline

(months) 0 12 File multiple applications File abroad application locally

• Local patent application filed first – multiple foreign applications filed at 12 months, claiming priority under the Paris Convention • multiple formality requirements • multiple prosecutions of applications • translations and national/regional fees required at 12 months

April 2015 Patent Cooperation Treaty 13 PCT Filing Timeline

(months) 0 12 18 30

File first File International Enter application International Publication national Application phase

• Local patent application filed first – single international application filed at 12 months, claiming priority under the Paris Convention • one set of formalities requirements • one international phase prosecution • translations and national/regional fees and prosecution not required until 30 months

April 2015 Patent Cooperation Treaty 14

Two Phases of the PCT

• International phase – Chapter I (mandatory) – Chapter II (optional)

• National phase (stage)

April 2015 Patent Cooperation Treaty 15 Chapter I

April 2015 Patent Cooperation Treaty 16 Chapter I - Filing and Searching • International application is – filed in a receiving Office (RO) – searched by an International Searching Authority (ISA) • Documents issued – International Search Report (Form PCT/ISA/210) • rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203) – Written Opinion of the ISA (Form PCT/ISA/237) • reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373) – optional - Supplementary International Search Report (SISR - Form PCT/SISA/501)

April 2015 Patent Cooperation Treaty 17 Chapter I - Amendment and Publication • Optional amendment to claims only, by applicant – filed directly with the IB under PCT Article 19 • complete set of claims • within 2 months of ISR mailing date • Publication of international application by the IB – with ISR and Article 19 amendments, if any – available on IB web site – PATENTSCOPE • Written Opinion of the ISA – made available to public by the IB when publication occurs • along with any informal comments filed by the applicant April 2015 Patent Cooperation Treaty 18

International Searching Authority (ISA) • Each PCT Contracting State reaches agreement – with one/more ISA(s) to search international applications filed in its receiving Office • Applicants who are U.S. residents or nationals – filing in the RO/US or RO/IB can select as ISA • USPTO • European Patent Office (EPO) • Korean Intellectual Property Office (KIPO) • Australian Patent Office (IPAU) • Russian Federation (Rospatent) • Israel Patent Office (ILPO) • USPTO acts as ISA for international applications filed in certain other receiving Offices April 2015 Patent Cooperation Treaty 19

International Searching and Preliminary Examining Authorities • AT Austria • FI Finland • AU Australia • IL Israel • BR Brazil • IN India • CA Canada • JP Japan • CL Chile • KR Republic of Korea • CN China • RU Russian Federation • EG Egypt • SE Sweden • EP EPO • US United States • ES Spain • XN Nordic Patent Institute • UK Ukraine* • CL Chile • SG Singapore*

*Has not yet commenced operations

April 2015 Patent Cooperation Treaty 20 PCT System Priority Application Filed

30 Date for calculation of all | PCT time limits

(months) 0 12 16 18 28 | | | | | | File local (priority) application

Typically a national patent application in the country of the applicant

April 2015 Patent Cooperation Treaty 21 PCT System – Chapter I International Application Filed

Where no priority Chapter I (no Demand filed) application is filed, the IFD Start of is the date for calculation of International all PCT time limits phase 30 |

(months) 0 12* 16 18 28 | | | | |

| | File local File (priority) international application application under the PCT Typically filed in the same national office *may be more than 12 months • international filing/search fees where the international application • one language contains a restoration-eligible • one set of formalities priority claim • legal effect in all PCT States

April 2015 Patent Cooperation Treaty 22

PCT System – Chapter I ISR and WOISA Issued Chapter I (no Demand filed)

30 |

(months) 0 12* 16 18 28 | | | | |

| | | File local File PCT International (priority) Search Report application (ISR) and Written ISA: Opinion of Time limit is the later of: • establishes ISR citing relevant prior art ISA (WOISA) • 3 months after the ISA receives (PCT/ISA/210) the search copy ‒ rarely, non-establishment of ISR • 9 months after the priority date (PCT/ISA/203) • prepares written opinion (PCT/ISA/237) April 2015 Patent Cooperation Treaty 23

International Search Report

Form PCT/ISA/210 (second sheet)

Documents Considered to be Relevant

24 International Search Report Cited Documents (References)

Document Categories

Document Citations & Relevant Passages

April 2015 Patent Cooperation Treaty 25

Three Main Categories of Prior Art in an ISR • “X” document – Claimed invention lacks • novelty or • inventive step when considered alone (lacks inventive step = obvious) • “Y” documents – Claimed invention lacks inventive step • when two or more documents are used in combination • “A” document – General state of the art reference

April 2015 Patent Cooperation Treaty 26

Three Additional Categories of Prior Art in an ISR • “P” document − intervening reference − published on or after the priority date but before the IFD − listed as “X,P” or “Y,P” or “A,P” • “O” document − non-written disclosure − published after the IFD − describes earlier oral disclosure − listed as “X,O” or “Y,O” or “A,O” • “E” document − U.S. or foreign patent or patent application published on or after the IFD but having a filing or priority date prior to the IFD − listed as “X,E” or “Y,E” or “A,E”

April 2015 Patent Cooperation Treaty 27 Written Opinion of the ISA Cover Sheet

Form PCT/ISA/237 (cover sheet)

Contents of the WOISA

28 Written Opinion of the ISA Basis of this Opinion Form PCT/ISA/237 Box No. I

• Basis of this opinion – application as filed • translated • rectified – no amendments • in contrast to CH II

April 2015 Patent Cooperation Treaty 29 WOISA Reasoned Statement

Form PCT/ISA/237 Box No. V

Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention

30 PCT System – Chapter I Article 19 Amendment Filed Chapter I (no Demand filed)

30 |

(months) 0 12* 16 18 28 | | | | |

| | | | File local File PCT ISR & (optional) (priority) WOISA Article 19 application amendment

Filed in the IB • claim amendments only • within 2 months of ISR/WOISA mailing date April 2015 Patent Cooperation Treaty 31

PCT System – Chapter I International Application Publication

WIPO publishes IA Chapter I (no Demand filed) • example: WO2013/018714 • accessible via DERWENT database and WIPO website • Includes ISR and any 30 Article 19 amendments | International Publication (months) | 0 12* 16 18 28 | | | | |

| | | | File local File PCT ISR & Article 19 (priority) WOISA amendments application (optional)

April 2015 Patent Cooperation Treaty 32 Japanese Language IA Published under the PCT

Bibliographic Page

English translation of Abstract (always present where publication is not in English)

33 Published IA with Article 19 Amendment

First page of Amended Claims

Stamped as AMENDED SHEET (ARTICLE 19) 34 PCT System – Chapter I Supplementary International Search Chapter I (no Demand filed)

Supplementary International 30 International Search Report(s) | Publication (SISR) established | | (months)

0 12* 16 18 19 28 | | | | | |

| | | | | File local File PCT (optional) ISR & Art Supplementary (priority) WOISA 19 International Search application Request

Filed in the IB SISA: • prior to 19 months from priority date • establishes SISR citing relevant • indicates a Supplementary ISA (SISA) prior art (PCT/SISA/501) ‒ originally-filed claims searched ‒ no written opinion produced April 2015 Patent Cooperation Treaty 35

PCT System – Chapter I IPRP (Chapter I)

Chapter I (no Demand filed)

30 International | Publication (months) |

0 12* 16 18 28 | | | | |

| | | | | File local File PCT ISR & Art 19 International (priority) WOISA Preliminary application Report on Patentability WIPO prepares an IPRP Chapter I (Chapter I) using the WOISA (PCT/IB/373)

April 2015 Patent Cooperation Treaty 36 IPRP Chapter I

Form PCT/IB/373 (cover letter for the WOISA)

37 PCT System – Chapter I National Phase Entry from Chapter I

Chapter I (no Demand filed) Enter national phase

30 International | Publication (months) |

0 12* 16 18 28 | | | | |

| | | | | File local File PCT ISR & Art 19 IPRP (CH I) (priority) WOISA application Applicant takes steps to pursue patent protection in various States • express intention to enter national phase • pay fees • provide translation April 2015 Patent Cooperation Treaty 38 Chapter II

April 2015 Patent Cooperation Treaty 39 Chapter II (optional) Preliminary Examination by the IPEA • A Demand is filed with an IPEA – usually accompanied by a response to the WOISA • arguments, and/or • Article 34 amendment to the description, claims, drawings • Documents issued – International Preliminary Report on Patentability (Chapter II) (Form PCT/IPEA/409) • usually the only Office action issued by the IPEA • no appeal or further prosecution during international stage once issued – Written Opinion of the IPEA (Form PCT/IPEA/408) • issued only in extraordinary circumstances

April 2015 Patent Cooperation Treaty 40 International Preliminary Examining Authority (IPEA)

• Each PCT Contracting State reaches agreement – with one/more IPEA to examine international applications filed in its receiving Office • IPEA/US is a competent IPEA – for international applications filed in RO/US – regardless of which ISA performed the search • IPEA/US may be a competent IPEA for IAs filed – in RO/IB • with some restrictions – in certain other receiving Offices • where ISA/US performed the search

April 2015 Patent Cooperation Treaty 41 PCT System – Chapter II Filing of Demand for Chapter II Entry Chapter I Chapter II

30 International | Publication (months) |

0 12* 16 18 22 28 | | | | | |

| | | | | File local File PCT ISR & Art 19 | (priority) WOISA | application File demand for International preliminary Time limit is the later of • Applicant “demands” additional examination examination/analysis • 3 months from mailing of ISR (or 203) and WOISA • usually based on an amended application and/or arguments • 22 months after the priority date April 2015 Patent Cooperation Treaty 42

PCT System – Chapter II IPRP (Chapter II)

Chapter I Chapter II

30 International | Publication (months) |

0 12* 16 18 22 28 | | | | | | | | | | | | File local File PCT | Art 19 | International (priority) ISR & Demand Preliminary application WOISA Report on Patentability International Preliminary Examining (Chapter II) Authority (IPEA) • prepares non-binding report on patentability • PCT/IPEA/409 & PCT/IPEA/416

April 2015 Patent Cooperation Treaty 43

IPRP (Chapter II) Cover Sheet

Form PCT/IPEA/409

Contents of the IPRP (CH II)

44 IPRP (Chapter II) Basis of the Report

Form PCT/IPEA/409 Box No. I

• Basis of the report –application as amended –in contrast to WOISA

April 2015 Patent Cooperation Treaty 45 IPRP (Chapter II) Reasoned Statement Form PCT/IPEA/409 Box No. V

Citations and explanations on novelty, inventive step and industrial applicability of the claimed invention

April 2015 Patent Cooperation Treaty 46 PCT System – Chapter II National Phase Entry from Chapter II Chapter I Chapter Enter II national phase 30 International | Publication (months) |

0 12 16 18 22 28 | | | | | | | | | | | | File local File PCT | Art 19 | IPRP (CH II) (priority) ISR & Demand application WOISA

Applicant takes steps to pursue patent protection in various States • express intention to enter national phase • pay fees • provide translation

April 2015 Patent Cooperation Treaty 47 The National Stage

April 2015 Patent Cooperation Treaty 48 National Stage Requirements • PCT Articles 22 and 39 require furnishing of the following for national/regional stage entry – a copy of the international application • unless already provided by the International Bureau – a translation of the international application • where appropriate – the national fee • National/Regional Offices may have additional requirements – PCT Applicant’s Guide provides details

April 2015 Patent Cooperation Treaty 49 35 U.S.C. 371(c) Requirements (1) Basic national fee (2) Copy of the international application as filed and an English translation, if applicable (3) Article 19 amendments, if any, and an English translation, if applicable (4) Oath/declaration complying with 35 U.S.C. 115 and 37 CFR 1.497 (5) English translation of any annexes to the IPER/IPRP (amendments), if applicable

April 2015 Patent Cooperation Treaty 50 PATENTSCOPE Available Documents

Published international application

IPRP(CH I) – PCT/IB/373 and English translation

WOISA – PCT/ISA/237 and English translation

Priority document

ISR – PCT/ISA/210 51 Any questions?

[email protected]

PCT Help Desk @ the USPTO 571-272-4300 8:30 – 5:00 Eastern time, M-F

April 2015 Patent Cooperation Treaty 52