Update of Procedures under the Patent Cooperation Treaty PCT

1
Update of Procedures under the Patent
Cooperation Treaty (PCT)
2
Most important amendments of the PCT
Regulations(adopted by the PCT Assembly on 1
October 1997with various dates of entry into
force)
1. Fee decrease (1 January 1998) (Also on June 1
and July 1, 1999) 2. PCT Gazette (1 January
1998) 3. Language of the international
application (1 July 1998) 4. Priority claims
and priority documents (1 July 1998) 5. Demand
for international preliminary examination (1 July
1998) 6. Payment of fees (1 July
1998) 7. Access to files (international
applications filed on and after 1 July
1998) 8. Nucleotide and amino acid sequence
listings (1 July 1998) 9. Deposits of biological
material (1 July 1998) 10. Electronic filing of
international applications (later)
3
Fee decrease old amounts versus current amounts
(Amounts in Swiss Francs - CHF)

• Amount New amount Reduction
• as of 1.1.97 as of 1.1.98
• Basic fee 762 650 14.70
• Designation fee 185 150 18.92
• Maximum designation fee 2,035 1,650
  18.92
• ( 11 designations payable )

4
Fee decrease old amounts versus current amounts
(Amounts in United States dollars - USD)

• Amount Amount Reduction
• as of 1.1.97 as of 1.1.98
• Basic fee 677 455 32.79
• Designation fee 164 105 35.98
• Maximum designation fee 1,804 1,155 35.98
• ( 11 designations payable )

5
Decrease in EPO Fees

• Search Fee for EP/ISA as of June 1, 1999
• for international applications received
• before July 1, 1999 1,227 USD
• Search Fee for EP/ISA for international
• applications received after July 1, 1999
  1,002 USD
• Preliminary Examination fee as of July 1,
  1999 1,533 Euro or
• 2,998.29 DEM
• Regional phase- maximum number of designation
  fees as of July 1, 1999 is 7

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PCT Gazette
The PCT Gazette is now available in two forms,
as of April 2, 1998 - in paper form, a single
bilingual (English and French) paper
version the Gazette - in electronic form,
containing the bibliographic data, any
drawing figure, and the abstract - the
electronic version is accessible, in English and
French
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Language of the international application
Receiving Offices will be
permitted, but not obliged, to accept the
filing of international applications in any
language (Note the USPTO as a receiving Office
may only accept English language international
applications under 35 U.S.C. 361(c).) - if the
receiving Offices accepts international
applications in the language in which it
accepts national filings, applicants can get
an international filing date by filing a PCT
request form together with a copy of the
national application
8
Correction and addition of priority claims (Rule
26bis)

• Applicants may correct or add any priority
  claim until the expiration of 4 months from the
  international filing date
• - a longer time limit may apply in certain
  cases, that is, where the
• earliest of the following time limits would
  expire later than the 4-month time limit
• - 16 months from the priority date or,
• - where the correction or addition would cause
  a change in the priority date, 16 months from
  the priority date so changed

02.11.98
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Content of priority claims in international
application
Where earlier application is a national
application filing date application
number country in which earlier application
was filed Where earlier application is a
regional application filing date
application number authority entrusted with
the granting of regional patents (in
practice, the regional Office concerned) in
the case of ARIPO (or any other regional patent
treaty whose membership is not restricted to
countries party to the Paris Convention) a
country party to the Paris Convention for which
the earlier application was filed Where
earlier application is an international
application international filing date
international application number receiving
Office in which the earlier international
application was filed
12
Certified copies of earlier international
applications of which priority is claimed
Under the revised Rules, applicants are
required to file with the receiving Office or the
International Bureau, a certified copy of any
earlier international application of which
priority is claimed under the Paris Convention
not later than 16 months from the priority
date. A certified copy of an international
application must be obtained from the receiving
Office with which such earlier international
application was filed.
13
Furnishing of priority documents and translations
thereof
The amended Regulations provide that -
where the priority document is not furnished in
time, designated States may not disregard a
priority claim without first giving the
applicant an opportunity to furnish the priority
document within a reasonable time limit -
where the priority document is received by the IB
after the expiration of the 16-month time
limit but before international publication,
the priority document will be considered to have
been received on the last day of the 16-month
time limit
14
Demand for international preliminary examination
Introduction of a safeguard where a demand is
not filed with the competent IPEA Where a
demand is submitted to a non-competent IPEA or to
a RO, an ISA or the IB, that Authority or
Office will either - forward it to the IB,
which will in turn transmit it to the compete
IPEA (or, if more than one, to the competent IPEA
chosen by the applicant) or - transmit it
directly to the competent IPEA (or, if more than
one, to the competent IPEA chosen by the
applicant) Any demand so transmitted to the
competent IPEA will be considered to have been
received on behalf of that Authority on the date
on which it was received by the RO, ISA or IB
or the non-competent IPEA concerned
15
Payment of fees Chapter II
- introduction of the same time limit, namely,
one month from the date of receipt of the
demand for international preliminary examination
, for payment of all fees due upon filing the
demand (preliminary examination fee and
handling fee) - if required amount is not paid
within one month from the date of receipt of
the demand, an invitation to pay within one month
from the date of the invitation is sent, late
payment may be made together with the late
payment fee (where applicable) - if required
amount is not paid within one month from the date
of invitation, the demand will be considered
not to have been submitted
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Access to files
Access to files held by the elected
Offices After international publication, any
elected Office whose national law allows access
by third parties to the file of a national
application will be entitled to allow
access - to any document relating to the
international application contained in its
file including the international preliminary
examination report and any written opinion and
response thereto. to the same extent as
provided for by the national law for access to
the file of a national application The revised
Rules will apply only to international
applications filed on or after 1 July 1998
17
Nucleotide and/or amino acid sequence listings
Sequence listings will be presented in paper
form in a separate "sequence listing part" of
the description Text matter contained in the
sequence listing part will be presented using
language neutral vocabulary defined by the
standard Where it is not possible for text
matter contained in the sequence listing part
to be presented using language neutral
vocabulary, that "free text" - may, and
preferably should, be in English - must be
repeated in the main part of the description, in
the language thereof
18
Electronic filing of documents
Greater use of modern technology for filing
and processing international applications
Gradual implementation as technical systems are
developed electronic techniques could be used
in at least three different ways 1.
Ancillary electronic version of a document in
paper form the filing of a document on paper
plus a computer readable version (example
diskette, on-line electronic transmission)
computer readable version to be used for data
capture, etc. legally determinative version
paper version 2. Electronic transmission
producing a printed document the filing of a
document by electronic means with the aim of
producing a printed document on paper in the
Office with which it is being filed (similar
to the way that a fax transmission is used)
legally determinative version printed
document 3. Document filed in electronic
form the filing of a document in electronic
form legally determinative version document
in electronic form
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Filing of documents in electronic form
Greater use of modern technology for filing
and processing international applications will
be permitted. Those Offices which are
prepared may accept international applications,
other documents and correspondence by filing in
electronic form no Office or Authority will be
obliged to receive or process such filings.
No applicant will be obliged to depart from
the current (paper-based) procedures. The
amended Regulations contain a broad set of
enabling provisions relating to electronic
filing. The standards and other details will, at
least initially, be set out in the PCT
Administrative Instructions. Technical and legal
problems remain to be solved.
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PCT Contracting States (102)
States which may be designated for regional
protection and also, except where otherwise
indicated, national protection
AP ARIPO Patent EA Eurasian Patent EP
European Patent OA OAPI Patent

• BF Burkina Faso
• BJ Benin
• CF Central African
• Republic
• CG Congo
• CI Côte dIvoire
• CM Cameroon
• GA Gabon
• GN Guinea
• GW Guinea-Bassau
• ML Mali
• MR Mauritania
• NE Niger
• SN Senegal
• TD Chad
• TG Togo

• AT Austria
• BE Belgium
• CH Switzerland
• CY Cyprus
• DE Germany
• DK Denmark
• ES Spain
• FI Finland
• FR France
• GB United Kingdom
• GR Greece
• IE Ireland
• IT Italy
• LI Liechtenstein
• LU Luxembourg
• MC Monaco
• NL Netherlands
• PT Portugal
• SE Sweden

AM Armenia AZ Azerbaijan BY Belarus
KG Kyrgyzstan KZ Kazakhstan MD Republic of
Moldova RU Russian FederationTJ TajikistanTM
Turkmenistan

• GH Ghana
• GM Gambia
• KE Kenya
• LS Lesotho
• MW Malawi
• SD Sudan
• SZ Swaziland
• UG Uganda
• ZW Zimbabwe

• Regional patent only

15.01.99
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PCT Contracting States (102) (continued)
States which may be designated for national
protection only except where otherwise indicated
AE United Arab Emirates AL Albania
AU Australia BA Bosnia and HerzegovinaBB Barbado
sBG BulgariaBR BrazilCA CanadaCN China CR Cost
a Rica (as of August 3, 1999) CU Cuba CZ Czech
Republic DM Dominica (as of August 7, 1999)
EE Estonia GD GranadaGE Georgia HR CroatiaHU
Hungary ID Indonesia IL IsraelIN
India IS IcelandJP JapanKP Democratic
Peoples Republic of KoreaKR Republic of
Korea LC Saint Lucia
LK Sri Lanka LR Liberia ? LT Lithuania ? LV
Latvia MG Madagascar ? MK The former Yugoslav
Republic of Macedonia MN Mongolia MX Mexi
co NO Norway NZ New Zealand PL Poland ?
RO Romania SG Singapore ? SI Slovenia SK Slova
kia SL Sierra Leone TR Turkey TT Trinidad and
Tobago UA Ukraine US United States of
America UZ Uzbekistan VN Viet
Nam YU Yugoslavia ZA South Africa
?
? Extension of European patent possible
07.05.99
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Filing of international applications by US
applicants
1. Receiving Office . . . . . . . . . . . . . .
USPTO or International Bureau (IB) 2. Language
of filing . . . . . . . . . . . . .English in
RO/US Any language in RO/IB 3. Number
of copies required . . . . . 1 4. Competent
ISAs . . . . . . . . . . . . . . USPTO
EPO 5. Competent IPEAs . . . . . . . . . . . .
. USPTO EPO (only if EPO was ISA)
9/7/94 LM
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Competent International Authorities for US
applicants
RO/US
RO/IB
ISA/US
ISA/EP
IPEA/EP
IPEA/US
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Advantages of using ISA/US

• Less expensive initially when filing the
  internationalapplication
• Lower fee for searching additional invention
  in case of lack of unity
• Reduced basic national fee when entering US
  national phase

26
Advantages of using ISA/EP

• Second search before international publication
  if the US applicationwas filed first
• International patent classification system
  (different from US)
• Additional language capabilities
• In case of lack of unity, partial
  international search carried out on first
  claimed invention and results provided to
  applicant togetherwith invitation to pay
  additional fees for search of other
  claimedinventions
• European search fee waived 100 in the
  regional phase
• Permits use of IPEA/EP, which will result in
• early opinion by IPEA/EP on the chances of
  obtaining a European patent
• 50 reduction of European examination fee in
  regional phase
• early grant of European patent if IPER is
  positive

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If no earlier US searched application - USD
250 USD 290
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The two routes to enter the US national phase
Entry into US national phase under 35 U.S.C. 371
Priority date PCT Filing Date
PCT Publication Enter
National Phase US Patent Issues
(months) 0 12
18
20 or 30 months
from priority
date

(months) 0
12
18 Continuation or Continuation in
part

application filed before abandonment

of PCT
application designating USA
Filing of continuing application under 35 U.S.C.
111(a)
PCT abandoned
20 or 30
US Patent Issues
Must be under 37 CFR 1.53
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Central Claiming Peripheral Claiming
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Where to get help

• USPTO PCT Help desk (1 703) 305 32 57
• Fax [phone]
• EPO RO, ISA and DO/EO The Hague (NL) (011 31
  70) 340 20 40
• Con Pasche RO (011 31 70) 340 30 91
• Tim Willis ISA (011 31 70) 340 31 71
• Martin De Roo DO/EO (011 31 70) 340 25 99
• Fax [phone]
• IPEA BEST Project The Hague (NL)
• Gerard Kruidenberg (011 31 70) 340 22 77
• Elsie Reisinger (011 31 70) 340 29 74
• IPEA Munich (DE) Examination
• Colin Pilpott (Director) (011 49 89) 2399
  2312
• Mark Weaver (011 49 89) 2399 8689
• Formalities examination
• René Attasio general (011 49 89) 2399 2939
• Frits-Jan Kottman mechanics,

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Where to get help at WIPO
WIPO Switchboard (41 22) 730 91 11 PCT
Processing Linda Schwarz (41 22) 730 92 62 David
Barmes (41 22) 730 93 61 Anil Sinha (41 22) 730
95 29 Fax [phone] PCT Receiving
Office Jean-Luc Baron (41 22) 730 93 52
(RO/IB) Fax [phone] PCT Legal
Division Isabelle Boutillon (41 22) 730 95
50 Matthew Bryan (41 22) 730 96 01 Eric
Wolff (41 22) 730 98 67 Yolande Coeckelbergs
(41 22) 730 90 55 Fax [phone] PCT
Legal Vitaly Troussov (41-22) 730 92 85
Publishing Section (Eurasian Patent
System) Debra Collier (PCT Newsletter) (41-22)
730 90 38 Louis Maassel (in the
US) Telephone and fax [phone]
06 email lmaassel_at_aol.com

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Common agent
applicant A
applicant B
applicant C
Agent X
Agent X is a common agent if he has been
appointed by all applicants
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Appointed common representative (Rule 90.2(a))
applicant B
applicant A
applicant C

• Applicants B and C appoint applicant A as their
  common representative.
• A may be so appointed only if national or
  resident of a PCT Contracting State.

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Agent of the appointed common representative
applicant B
applicant A
applicant C
agent X

• Applicant A (e.g. corporate applicant), who has
  been appointed by the other applicants (e.g.
  applicants/inventors) as their common
  representative, appoints agent X.
• Agent X can, on behalf of the appointed common
  representative, sign all documents for all
  applicants including any withdrawal (Rule
  90.3(c)).

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"Deemed" common representative (Rule 90.2(b))
applicant B
applicant A
applicant C
agent X

• There is no common agent and the applicants have
  not appointed a common representative.
  Consequently applicant A is the "deemed" common
  representative (i.e., the first applicant named
  in the Request, who has the right to file an
  international application with the receiving
  Office with which the international application
  was filed).
• Agent X, appointed only by applicant A, can sign
  all documents for all applicants except the
  request and any withdrawal (Rules 90.3(c) and
  90bis.5(a)).

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International Application filed in English with
IB/RO by US, DE and AU applicants
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