The PCT and entry into the national phase Essentials: The PCT UK approach Dutch approach EU Unitary PCT and entry Patent Legal Scope of Priority Patent national phase procedure framework protection What is a French approach German approach patent Patent documentation Justification History SPCs The Patent Cooperation Treaty The Patent Cooperation Treaty (PCT) was signed in Washington DC on PCT 19 June 1970. It entered into force on 24 January 1978 and became www.wipo.int/export/sites/www/pct/en/ texts/pdf/pct.pdf operational when the first international application was filed on 1 June 1978. PCT contracting states www.wipo.int/pct/en/pct_contracting_ states.html Article 1(1) PCT: “The States party to this Treaty [ … ] constitute a Union for WIPO website cooperation in the filing, searching, and examination, of applications for www.wipo.int/pct/en/ the protection of inventions, and for rendering special technical services.” Preliminary examination The preliminary examination provides The PCT makes it possible to file international patent applications in an optional, non-binding opinion on whether the claimed invention appears to accordance with a single procedure. be novel, to involve an inventive step and to be industrially applicable as defined in Article 33 PCT. It does not provide for the grant of “international patents”. The patent offices of the contracting states for which protection is sought remain in Relationship to Paris Convention The PCT is a “special agreement” according charge of granting regional or national patents in the light of the results to Article 19 of the Paris Convention: produced according to the PCT filing procedure. Article 19 Paris Convention Special Agreements It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention. Hence, only member states of the Paris Convention may be contracting states to the PCT. European Patent Academy Patent litigation. Block 1 | The PCT and entry into the national phase | 1 How it works The PCT system is composed of two main phases: a single, international Article 2 PCT phase, followed by one or more national phases. Definitions For the purposes of this Treaty and the Regulations and unless expressly stated The international phase consists of up to five stages: otherwise: (i) “application” means an application for – The filing of the international application with, and its processing by, the protection of an invention; references the receiving Office. to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, – The establishment of an international search report by an International utility certificates, utility models, patents Searching Authority. or certificates of addition, inventors’ certificates of addition, and utility – The publication of the international application by the International certificates of addition; Bureau of WIPO. (ii) references to a “patent” shall be construed as references to patents for – The (optional) establishment of a supplementary international search inventions, inventors’ certificates, utility report by an authority specified for supplementary international search. certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility – The (optional) establishment of a preliminary examination report by an certificates of addition; International Preliminary Examining Authority. (iii) “national patent” means a patent granted by a national authority; The national phase starts, upon completion of the international phase, if (iv) “regional patent” means a the applicant decides to continue processing the application before the patent granted by a national or an intergovernmental authority having the regional or national patent offices with the aim of obtaining regional or power to grant patents effective in more national protection. than one State; (v) “regional application” means an application for a regional patent; (vi) references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty; [ … ] European Patent Academy Patent litigation. Block 1 | The PCT and entry into the national phase | 2 Applying for a patent under the PCT Any resident or national of a PCT contracting state may file an Article 9 PCT international application. The applicant → see below International applications have to be filed with a competent receiving Receiving Office Article 2 PCT Office. The applicant can choose from: Definitions For the purposes of this Treaty and the – The national office of the PCT contracting state of which the applicant is Regulations and unless expressly stated a resident or national, or with the office acting for that state. otherwise: (xv) “receiving Office” means the – The International Bureau of the World Intellectual Property national Office or the intergovernmental Organization (WIPO), irrespective of the PCT contracting state of which organization with which the international the applicant is a resident or national. application has been filed; EPO member states – The competent regional office, e.g. the European Patent Office (EPO) www.epo.org/about- us/organisation/ (provided that at least one applicant is a national or resident of a member-states.html contracting state to the European Patent Convention (EPC)). When the EPO acts as receiving Office it processes the application in accordance with the relevant provisions of the PCT. The Article 9 PCT provisions of the PCT and its Regulations The applicant are supplemented by the provisions of the EPC. (1) Any resident or national of a Contracting State may file an international application. (2) The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications. (3) The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations. What are the elements of an international application? International applications must contain the following elements: Article 3 PCT The international application – PCT request (Article 4 PCT) [ … ] (2) An international application shall – Description (Article 5 PCT) contain, as specified in this Treaty and the – Claim(s) (Article 6 PCT) Regulations, a request, a description, one or more claims, one or more drawings – Drawing(s) (where required) (Article 7 PCT) (where required), and an abstract. – Abstract (Article 3(3) PCT). [ … ] European Patent Academy Patent litigation. Block 1 | The PCT and entry into the national phase | 3 The PCT request PCT requests must contain: Article 4 PCT The request – A petition to the effect that the international application is to be → see below processed according to the PCT. – The designation of the contracting state(s) in which protection is sought, indicating if national or, where available, regional patents are desired. – The name of, and other prescribed data concerning, the applicant and the agent (if any). – The title of the invention. – The name of, and other prescribed data concerning, the inventor according to the legal requirements of the designated states. Article 4 PCT The request (1) The request shall contain: (i) a petition to the effect that the international application be processed according to this Treaty; (ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application ("designated States"); if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent; [ … ] Description, claims and abstract Article 5 PCT (The description): “The description shall disclose the Article 7 PCT invention in a manner sufficiently clear and complete for the invention to The drawings (1) Subject to the provisions of be carried out by a person skilled in the art." paragraph (2)(ii), drawings shall be required when they are necessary for the Article 6 PCT (The claims): “The claim or claims shall define the matter for understanding of the invention. which protection is sought. Claims shall be clear and concise. They shall (2) Where, without being necessary for the be fully supported by the description." understanding of the invention, the nature of the invention admits of illustration by Article 3(3) PCT: “The abstract merely serves the purpose of technical drawings: information and cannot be taken into account for any other purpose, (i) the applicant may include such drawings in