pct and ep routes for the protection of inventions an overvie za saradnju sa eu/medjunarodna... ·...

PCT and EP routes for the protection of inventions

An overview

Jörg MachekDirector 2.2.21European Patent Office

Workshop on National and International Invention Protection

Belgrade, October 2010

Jörg Machek September 2010Director, 2.2.21

PCT applications before the EPO - an overview

2

PCT: International filing system (1)

Patent Cooperation Treaty (PCT)

An international Treaty (Treaty of Washington)

Signed on 19.6.1970

Entered into force on 24.1.1978

142 contracting states on 1.1.2010

Members of the Paris Convention (1883)

Participation of regional organisations:

(EPO, EAPO, ARIPO, OAPI)



3

PCT: International filing system (2)

The PCT contracting states constitute a Union (Art. 1 PCT)

IB of WIPO: administration/organisation

PCT Assembly: decisive power (EPO observer)

Main characteristics of "PCT procedure"

A single centralised procedure for filing a patent application

With effect in all PCT contracting states: "Worldwide filing system"



4

PCT contracting states (1.1.2010)



5

PCT procedure

1st filing Filing IA IS Demand IPE NationalPhase

ISR + WOPublicationIA + ISR IPER

17m 18m 22m 28m 30/31m

No

Yes

National Office RO ISA IPEADesignated/Elected

Office

Public accessIPRP(WO)



6

ISAs/IPEAs

Austria Australia Brazil Canada China EPO Finland Japan Korea Nordic Patent Institute (NPI) Russia Spain Sweden USA



7

Worldwide effect of filing a PCT application

Internationalfiling date

Nationalphase

USPTO JPO EPO

One IA filed for 142 member states at one office: receiving Office (RO)

One procedure: international phase (RO, ISA, IPEA)

30/31 months from priority:Entry into the national/regional phase

FR UK NL DE

"Patent granting phase"

Priorityapplication

......

......



8

Traditional patent system vs the PCT system (1)

National first patent application

Within 12 months: MULTIPLE foreign applications claiming priority

Some rationalisation because of "regional arrangements"

(EPO, ARIPO, OAPI, EAPO)

Consequence:

Within 12 months: multiple

Filing procedures/translations

Searches

Examinations

priority application

0 12 second filings



9

Traditional patent system vs The PCT system (2)

National first patent application

Within 12 months: ONE single PCT application claiming priority

having the effect of a national/regional application

in all PCT contracting states

PCT system is patent "filing" system, not patent "granting" system

International phase

one single procedure until 30/31-months from priority date in one language

international search and written opinion

international publication

(international preliminary examination)

National/regional phase

multiple procedures before the national/regional Offices (DO/EO)

for the grant of national/regional patents



10

Role of the EPO in the framework of the PCT

INTERNATIONAL PHASE

Receiving Office (RO)

International Authority

International Searching Authority (ISA)

International Preliminary Examining Authority (IPEA)

NATIONAL (EUROPEAN) PHASE

Designated/Elected Office (DO/EO)

DO if the applicant has only obtained an ISR

EO if the applicant in addition has obtained an IPER



11

Applicable law - relevant information

PCT PCT Treaty & Regulations under the Treaty

Administrative Instructions (AI)

RO Guidelines

ISPE Guidelines

Agreement between the EPO as ISA and IPEA - IB of WIPO

PCT Applicant's Guide

www.wipo.int/pct/en

EPC Articles 150-153 Part X of the EPC

Rules 157-165 Implementing Regulations to Part X of the EPC

OJ EPO: PCT related Decisions & Notices

How to get a European patent, Part II, 2008: "Euro-PCT Guide"

www.epo.org



12

Art. 151 EPC - EPO as Receiving Office (RO)

Filing options

National Office of PCT member state at least one applicant is a national or resident of that state

With the EPO as RO at least one applicant is a national or resident of an EPC member

state

IB as RO always (resident or national of a PCT contracting state)



13

PCT designation system

Since 2004: Automatic designation of all PCT contracting states bound by the PCT on the filing date

Where possible, for a national and regional patent EPO is by default designated Office in EACH application

Designation includes possibility of extension of a European patent IF: Extension state is a PCT contracting state

How: Choice to be made in the European phase

EPC states may CLOSE OFF the national route Belgium, Cyprus, France, Greece, Ireland, Monaco, the Netherlands,

Slovenia



14

Art. 153(2) EPC - Euro-PCT application

Application for which the EPO is a DO and which has been accorded an international filing date has the effect of a regular European application.

Such application, being equivalent to a regular European patent application, is usually referred to as a "Euro-PCT application"

Art. 11 (3) PCT



15

Competence of the EPO as RO/ISA/IPEA

EPO as ISA or IPEA

Competent, in principle, universal

Restrictions:

EPO as ISA

Dependent on specification by the RO

Competence may be limited (e.g. business methods)

EPO as IPEA

Only if ISA was EPO, ES, SE, AT, FI, XN (NPI)

Specification by the RO

Competence may be limited (see above)



16

International Search (IS)

Each IA shall be the subject of an IS (Art. 15(1) PCT)

The IS is performed by an ISA (Art.16 PCT)

Essentially, a documentary search in a collection of documents

classified according to the content (IPC/ECLA)

Patent documents

Non patent literature



17

Aim of IS

Discover relevant prior art (Art. 15 PCT)

Prior art

Everything made available to the public anywhere by means of

written disclosure (Rule 33 PCT)

Relevant

For determining whether the claimed invention is new and

inventive

Robert Cramer



18

The International Search Report (ISR) (Art. 18 PCT)

Contains the results of the IS

= identifies the prior art documents (x, y, a)

Aim

To enhance the validity of patents granted subsequent to IS

Many DOs have no facilities/resources comparable to the ISAs

The ISR must therefore be as complete as possible

To be established within the time limit in Rule 42.1 PCT

3 months from filing, or

9 months after priority



19

International Written Opinion (WO-ISA)

Since 2004: At the time of IS a substantive examination takes place

as well ("core issues")

invention novel, inventive and industrially applicable (Rule 43bis PCT)?

Enables assessment of economic value and chances of obtaining a

patent at an early stage



20

International publication

ISR and Written Opinion (WO-ISA) sent to

Applicant and

IB of WIPO

Application and ISR published by IB after 18 months from priority

(Art. 21 PCT)

WO-ISA is not published

access to third parties after 30 months



21

International Preliminary Examination (IPE) (Art. 31ff PCT)

Optional for applicants from a PCT contracting state

Results in a non binding opinion on:

novelty

inventive step

industrial application

laid down in the:

International Preliminary Report on Patentability

(IPRP Chapter II) = IPER

Rule 70 PCT



22

Benefits of IPE

Opportunity for a "dialogue"

Opportunity to amend the IA

IPRP Chapter II gives opinion on the amended application

Amendments made "have effect" in all elected states



23

Rule 159 EPC - Entry into the European phase

Time limit for entry 31 months from the priority date

Minimum requirements: File translation of the application documents if not published by IB in

an EPO official language (EN, FR, DE)

Pay fees

File request for examination

EPO Form 1200



24

The EPO as DO/EO

No additional search performed if EPO was ISA

Reduction on examination fee if EPO was IPEA

WO-ISA or IPER by EPO will as of 1.4.2010 have same status as first communication in substantive examination by the EPO

information at http://www.wipo.int/pct/en/appguide/index.jsp



25



26

The Fees (PCT) - exemplary

Filing fees (€ 950,- plus transmittal fees [approx. € 40,- to € 150,-])

Search fees (€ 1785,- for EPO as ISA)

Preliminary examination fees (€ 1760,- for EPO as IPEA)



27

The Fees (EP) - exemplary Filing fees

(€ 105,-)

Search fees (€ 1105,- for EPO as ISA)

Designation fees (€525)

Examination fees (€ 1480)

Grant/publication fee (€ 830,-)

total € 4045,-;

regional PCT application € 2200,- after IPER;

€ 2940.- after WO-ISA



28

EPC for contracting states

Article 4a, 26, 172 represented in conference of ministers and AC, revision of EPC

Article 39 50% of renewal fees are re-paid to European Patent Organisation

Article 133(3) natural or legal persons resident in contracting state can be represented by

an employee

Article 134 national of contracting state can pass EQE and be representative

"grandfather regulation": representatives qualified in contracting states can become European representatives without EQE

Article 14, Rule 4 Use of official language of contracting state for filing documents

(translation later) and in oral proceedings (provide interpretation)

Rule 6, Rules relating to Fees Article 14 filing application in national language, fee reduction of 20%



29

PCT procedure

Filing

ESR + ESOP

Request for examination

No request for examination

Reply of the applicant

(B20)

(Oral Proceedings)

Grant or Refusal

Letter of reply and/or

amendments

No letter of reply or amendments

B10 by examiner ESOP converted into B10 by support

staff

Letter of reply and/or

amendments

No letter of reply or amendments

No demand for Chapter II

Demand for Chapter II

Filing

ISR + WO-ISA

IPER by examiner WO-ISA converted into IPRP by IB

Considered withdrawn

WO-ISA converted into IPER by support staff

(408)

(Letter of reply and/or

amendments)

EP procedure

(Telephone conversation)



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Abbreviations

ARIPO African Regional Intellectual Property Organization DO Designated Office EAPO Eurasian Patent Organisation EO Elected Office EPO European Patent Office IA International Authority IB of WIPO International Bureau IPE International Preliminary Examination IPEA International Preliminary Examining Authority IPER International Preliminary Examination Report IS International Search ISA International Searching Authority IPC/ECLA International Patent Classification IPRB International Preliminary Report on Patentability ISPE Guidelines International Search and Preliminary Examination Guidelines ISR International Search Report OAPI African Intellectual Property Organization OJ Official Journal of the EPO RO Receiving Office WIPO World Intellectual Property Organisation WO-ISA Written opinion of the ISA

Thank you for your attention !

www.epo.org

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