PATENT CO-OPERATION PATENT CO-OPERATION TREATYTREATY

P. ILANANGAIP. ILANANGAIPATENT DEPARTMENTPATENT DEPARTMENT

ALTACIT GLOBALALTACIT GLOBALCHENNAICHENNAI

The Traditional Patent SystemThe Traditional Patent System

Patent Co-operation Treaty [PCT]Patent Co-operation Treaty [PCT] It is an international treaty, administered by the World It is an international treaty, administered by the World

Intellectual Property Organization (WIPO). Intellectual Property Organization (WIPO). Makes it possible to seek patent protection for an invention Makes it possible to seek patent protection for an invention

simultaneously in each of a large number of countries by filing a simultaneously in each of a large number of countries by filing a single ‘international’ patent application instead of filing several single ‘international’ patent application instead of filing several separate national or regional patent applications. separate national or regional patent applications.

It is a Patent ‘filing’ system and not a Patent ‘granting’ system. It is a Patent ‘filing’ system and not a Patent ‘granting’ system. While the PCT simplifies the patent filing process, the ultimate While the PCT simplifies the patent filing process, the ultimate

decision to grant a patent rests exclusively with each national or decision to grant a patent rests exclusively with each national or regional patent Office. regional patent Office.

History of PCTHistory of PCT The Washington Diplomatic Conference on the Patent The Washington Diplomatic Conference on the Patent

Cooperation Treaty took place from Cooperation Treaty took place from May 25 to to June 19, , 1970. . The Patent Cooperation Treaty was signed in The Patent Cooperation Treaty was signed in Washington at the at the very end of the conference, i.e., on very end of the conference, i.e., on June 19June 19, , 19701970. The Treaty . The Treaty entered into force on entered into force on January 24January 24, , 19781978 initially with 18 initially with 18 Contracting States. The first international applications were filed Contracting States. The first international applications were filed on on June 1June 1, , 19781978. The Treaty was subsequently amended in 1979, . The Treaty was subsequently amended in 1979, and modified in 1984 and 2001. Any Contracting State to the and modified in 1984 and 2001. Any Contracting State to the Paris Convention for the Protection of Industrial PropertyParis Convention for the Protection of Industrial Property can can become a member of the PCT. A majority of the world's become a member of the PCT. A majority of the world's countries are signatories to the PCT, including all of the major countries are signatories to the PCT, including all of the major industrialized countries. As of industrialized countries. As of September 28September 28, , 20092009, there were , there were 142 Contracting States to the PCT. On 24 September 2009, 142 Contracting States to the PCT. On 24 September 2009, Thailand deposited its instrument of accession to the PCT, and Thailand deposited its instrument of accession to the PCT, and on 24 December 2009, will become bound by the PCT. on 24 December 2009, will become bound by the PCT. Consequently, any international application filed on or after 24 Consequently, any international application filed on or after 24 December 2009 will automatically include the designation of December 2009 will automatically include the designation of Thailand.Thailand.

When did India join the PCT?When did India join the PCT? In August, 1998 India joined the Patent Cooperation In August, 1998 India joined the Patent Cooperation

Treaty (PCT) by acceding to the Paris Convention on Treaty (PCT) by acceding to the Paris Convention on Intellectual Property. Intellectual Property.

The Paris Convention, a treaty more than 100 years old, The Paris Convention, a treaty more than 100 years old, offers a 12 month grace period for an inventor to file a offers a 12 month grace period for an inventor to file a patent application in other member countries after filing patent application in other member countries after filing in the home country. in the home country.

The PCT extends the benefits of the Paris Convention The PCT extends the benefits of the Paris Convention by allowing an inventor to file an "international patent by allowing an inventor to file an "international patent application," which has the effect of filing a separate application," which has the effect of filing a separate patent application in each of the PCT member countries patent application in each of the PCT member countries designated by the inventor. designated by the inventor.

The Indian Patent Office has been designated as the The Indian Patent Office has been designated as the receiving office for PCT applications.receiving office for PCT applications.

The PCT offers the following advantages:The PCT offers the following advantages:

One set of Formality Requirements in one language at one One set of Formality Requirements in one language at one officeoffice International Search [Mandatory] which provides for the International Search [Mandatory] which provides for the Written Opinion of the International Searching AuthorityWritten Opinion of the International Searching Authority International Publication and International Publication and International Preliminary Examination Report [Optional] International Preliminary Examination Report [Optional] followed by a National/Regional Phase before Designatedfollowed by a National/Regional Phase before Designated Offices within 30/31 months and only if the Applicant Offices within 30/31 months and only if the Applicant wishes to proceedwishes to proceed Postpones major costs and provides additional time to Postpones major costs and provides additional time to consider various patenting options consider various patenting options Provides a strong basis for patenting decisionsProvides a strong basis for patenting decisions

Where to file the International ApplicationWhere to file the International Application

local or national patent Office, local or national patent Office, directly with the International Bureau of WIPO, directly with the International Bureau of WIPO, regional receiving Office (the ARIPO, the Eurasian regional receiving Office (the ARIPO, the Eurasian

Patent Convention, the European Patent Convention or Patent Convention, the European Patent Convention or the OAPI)the OAPI)

The PCT process is comprised of the following The PCT process is comprised of the following

main steps:main steps: First Patent Application First Patent Application (1) Filing of a local patent application (1) Filing of a local patent application International Phase International Phase (2) Filing of a PCT application (2) Filing of a PCT application (3) International search report (ISR) and written (3) International search report (ISR) and written

opinion opinion (4) International publication (4) International publication (5) Optional supplementary international search (5) Optional supplementary international search (6) Optional international preliminary examination (6) Optional international preliminary examination National Phase National Phase (7) Processing of the PCT application before national (7) Processing of the PCT application before national

and/or regional patent Offices and/or regional patent Offices

The timeline provides you with a graphical representation of the The timeline provides you with a graphical representation of the

PCT procedure and sequencePCT procedure and sequence

Filing of a Local (First) Patent ApplicationFiling of a Local (First) Patent Application

A request A request A description A description One or more claims One or more claims An abstract An abstract One or more drawings (where necessary)One or more drawings (where necessary) Payment of Prescribed fees Payment of Prescribed fees

Filing of a PCT ApplicationFiling of a PCT Application

have up to 12 months from the filing date of your local (first) have up to 12 months from the filing date of your local (first) application to file PCT application with the receiving Office. application to file PCT application with the receiving Office.

Minimum Requirements to obtain an International Filing DateMinimum Requirements to obtain an International Filing Date - at least one of the applicants is a resident or national of a PCT- at least one of the applicants is a resident or national of a PCT Contracting State Contracting State - the application must be in a language accepted by the receiving- the application must be in a language accepted by the receiving officeoffice - the PCT application contains at least the following elements: - the PCT application contains at least the following elements: 1. an indication that it is intended to be a PCT application 1. an indication that it is intended to be a PCT application 2. the name of at least one applicant2. the name of at least one applicant 3. a description3. a description 4. a claim or claims4. a claim or claims

Fees PayableFees Payable transmittal fee transmittal fee international filing fee international filing fee search fee search fee Priority document feePriority document fee have up to one month from the date that the receiving have up to one month from the date that the receiving

Office receives the PCT application to pay the Office receives the PCT application to pay the transmittal fee, international filing fee, and search fee. transmittal fee, international filing fee, and search fee.

provides for a 90% reduction in the international filing provides for a 90% reduction in the international filing fee for individuals whose Nationality and Residence is fee for individuals whose Nationality and Residence is in one of the PCT contracting states.in one of the PCT contracting states.

International Search Report (ISR) and Written International Search Report (ISR) and Written

Opinion of the ISAOpinion of the ISA The applicant receives an international search report The applicant receives an international search report

(ISR) and a written opinion from a national or regional (ISR) and a written opinion from a national or regional patent Office that has been appointed as an International patent Office that has been appointed as an International Searching Authority (ISA) ISR within 16 months from Searching Authority (ISA) ISR within 16 months from the filing date of the local applicationthe filing date of the local application

The ISR will contain citations of patent documents and The ISR will contain citations of patent documents and other technological references relevant to the other technological references relevant to the patentability of your invention. The written opinion patentability of your invention. The written opinion complements the ISR by providing a preliminary non-complements the ISR by providing a preliminary non-binding patentability assessment of your invention binding patentability assessment of your invention taking into consideration the references contained in the taking into consideration the references contained in the ISR. ISR.

International Preliminary Report on Patentability International Preliminary Report on Patentability

(Chapter I)(Chapter I) If a demand is not filed, after having considered the If a demand is not filed, after having considered the

written opinion of the ISA, the WIPO will attach a written opinion of the ISA, the WIPO will attach a cover sheet to this written opinion effectively cover sheet to this written opinion effectively converting it into the international preliminary report on converting it into the international preliminary report on patentability (Chapter I). patentability (Chapter I).

International PublicationInternational Publication The International Bureau of WIPO publishes the PCT The International Bureau of WIPO publishes the PCT

application on application on PATENTSCOPE® PATENTSCOPE® shortly after 18 shortly after 18 months from the priority date of your PCT application.months from the priority date of your PCT application.

(optional) (optional) - Supplementary International Search - Supplementary International Search The request for supplementary international search may The request for supplementary international search may

be filed anytime prior to the expiry of 19 months from be filed anytime prior to the expiry of 19 months from the priority date. the priority date.

In case where a more complete overview of the prior art In case where a more complete overview of the prior art is desired, particularly in respect of specific languages. is desired, particularly in respect of specific languages.

The supplementary international search report prepared The supplementary international search report prepared by the International Searching Authority is available by the International Searching Authority is available within 28 months from the priority date. within 28 months from the priority date.

(optional) (optional) - Filing of a Demand for International - Filing of a Demand for International

Preliminary Examination (Chapter II)Preliminary Examination (Chapter II) A demand for international preliminary examination is filed with A demand for international preliminary examination is filed with

a national or regional patent Office that has been appointed as an a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA. applicants, referred to in PCT terms as the “competent” IPEA.

It may be filed within 22 months from the priority date of the It may be filed within 22 months from the priority date of the PCT application.PCT application.

International Preliminary Report on Patentability (Chapter II) International Preliminary Report on Patentability (Chapter II) Within 28 months from the priority date, the IPEA sends an Within 28 months from the priority date, the IPEA sends an

international preliminary report on patentability (Chapter II) international preliminary report on patentability (Chapter II) containing the opinion of the IPEA for national or regional containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of the invention. This Offices to use in assessing the patentability of the invention. This report is a non-binding opinion on patentability.report is a non-binding opinion on patentability.

Entry into the National PhaseEntry into the National Phase

It represents the end of the international phase of the It represents the end of the international phase of the PCT procedure and the beginning of the national patent PCT procedure and the beginning of the national patent grant procedure. grant procedure.

20 or 30 or 31 months time limit to enter national phase20 or 30 or 31 months time limit to enter national phase The international preliminary report on patentability The international preliminary report on patentability

(either under Chapter I or Chapter II), received helps to (either under Chapter I or Chapter II), received helps to evaluate the chances of obtaining a patent in the evaluate the chances of obtaining a patent in the countries of interest. countries of interest.

THANK YOUTHANK YOU