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Using the Patent Cooperation Treaty (PCT) as a Strategic Tool for Business Success

Using the Patent Cooperation Treaty (PCT) as a Strategic Tool for Business Success. Patrick Genin Patent Cooperation Treaty (PCT) – Legal Division November 26, 2008 – WIPO-SCIPS-SMEs. Outline. 1) What is the PCT? 2) Why use the PCT? What are its advantages?

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Using the Patent Cooperation Treaty (PCT) as a Strategic Tool for Business Success

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  1. Using the Patent Cooperation Treaty (PCT) as a Strategic Tool for Business Success Patrick Genin Patent Cooperation Treaty (PCT) – Legal Division November 26, 2008 – WIPO-SCIPS-SMEs

  2. Outline • 1) What is the PCT? • 2) Why use the PCT? What are its advantages? • 3) Recent and future Developments

  3. 1) What is the PCT?

  4. What is the PCT? • A mainly procedural international treaty facilitating certain steps in the process of obtaining patents internationally • More specifically, the PCT establishes a procedure for the filing and processing of a single application for a patent which has legal effect in the countries which are Treaty members • Simplifies the procedure for getting patent protection in many countries, making it more efficient and economical for: • (1) users of the patent system (applicants and inventors); and • (2) patent Offices

  5. What is the PCT? • The decision on granting patents is made exclusively by national or regional Offices in the national phase • Signed in June 1970, in Washington, D.C., and became operational in June 1978 with 18 States • At present, the PCT has 139 Contracting States

  6. Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad China Colombia Comoros Congo • Malawi • Malaysia • Mali • Malta • Mauritania • Mexico • Monaco • Mongolia • Montenegro • Morocco • Mozambique • Namibia • Netherlands • New Zealand • Nicaragua • Niger • Nigeria • Norway • Oman • Papua New Guinea • Philippines • St. Kitts and Nevis • Swaziland • Sweden • Switzerland • Syrian Arab Republic • Tajikistan • The former Yugoslav • Republic of Macedonia • Togo • Trinidad and Tobago • Tunisia • Turkey • Turkmenistan • Uganda • Ukraine • United Arab Emirates • United Kingdom • United Republic of Tanzania • United States of America • Uzbekistan • Viet Nam • Yugoslavia • Zambia • Zimbabwe Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People’s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Poland Portugal Republic of Korea Republic of Moldova Romania Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tome and Principe Senegal Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan What is the PCT? =PCT

  7. What is the PCT? Growth in PCT member States over last 10 years 2008 Sao Tome and Principe 2007 Malta Bahrain Dominican Republic Angola 1999 United Arab Emirates South Africa Costa Rica Dominica United Republic of Tanzania Morocco 2000 Algeria Antigua andBarbuda Mozambique Belize 2001 Colombia Ecuador Equatorial Guinea Philippines Oman Zambia Tunisia 2002 Saint Vincent and the Grenadines Seychelles 2003 Papua New GuineaSyrian Arab RepublicEgyptBotswana 2004 San Marino 2005 Comoros Nigeria Libyan Arab Jamahiriya St. Kitts and Nevis 2006 Honduras El Salvador Malaysia Lao People’s Democratic Republic Guatemala Malta

  8. Growth in PCT Filings Approx. 158,400 total filings in 2007 = +5.9% What is the PCT?

  9. International applications received in 2007 by country of origin What is the PCT?

  10. What is the PCT? Filing trends

  11. The PCT System--typical use, in more detail What is the PCT? Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically a national patent application in the home country of the applicant

  12. The PCT System--typical use, in more detail What is the PCT? Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Typically filed in same national patent office--one set of fees, one language, one set of formaility requirements--and legal effect in all PCT States

  13. The PCT System--typical use, in more detail What is the PCT? Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Report on state of the art (prior art documents and their relevance) + initial patentability opinion

  14. The PCT System--typical use, in more detail What is the PCT? Disclosing to world content of application in standardized way Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  15. The PCT System--typical use, in more detail What is the PCT? Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Request an additional patentability analysis on basis of amended application

  16. The PCT System--typical use, in more detail What is the PCT? Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decision-making

  17. The PCT System--typical use, in more detail What is the PCT? Express intention and take steps to pursue to grant in various states Enter national phase International publication (months) 0 12 16 18 22 28 30 File local application File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability

  18. (2) Why use the PCT? What are its advantages?

  19. Why use the PCT? • Most businesses worldwide which seek and use patents share objectives to: • control costs while preserving options • make informed business decisions • use the best tools available when seeking protection The PCT responds to these objectives

  20. Why use the PCT? Because, as the cornerstone of the international patent system, it provides a worldwide system for simplified filing of patent applications, which-- • 1. brings the world within reach • 2. postpones the major costs associated with internationalizing a patent application • 3. provides a strong basis for patenting decisions • 4. is used by the world’s major corporations, universities and research institutions when they seek international patent protection • 5. allows applicants to apply securely and easily online, and to save money by doing so

  21. 1. Brings the world within reach Why use the PCT? How? PCT application = Legal effect of a regular national patentapplication in all PCT States

  22. Why use the PCT? 2. Postpones the major costs associated with internationalizing a patent application

  23. Why use the PCT? Traditional patent system vs. PCT system File applications abroad (months) 12 0 Traditional Fees for: --translations--Office fees--local agents Fees for: --translations--Office fees--local agents File local application Enter national phase International publication (months) PCT 0 12 16 18 22 28 30 File PCT application International search report & written opinion (optional) File demand forInternational preliminary examination (optional) International preliminary report on patentability File local application

  24. PCT Costs--in perspective Why use the PCT? According to IP Global Estimator, the total cost of application (RO/US, ISA/EP, 46 pages/12 claims w/3 independent, national phase in AU, CA, EPO, JP, MX, US and EP validation in DE, FR, GB, IT, NL & SE, + maintenance fees --from filing until expiration of all national phase patents at 20 years from the filing date) would be USD $232,742 Thus, the PCT filing fees, including the international search by the EPO, (total: USD $3,637) represented 1.6% of what the PCT applicant could expect to pay throughout the full life of this patent family! If the payment of annual maintenance fees is eliminated from the above calculation, the total amount that the applicant would expect to pay to see his/her patents granted is reduced to USD $86,398. PCT filing fees would then represent 4.2% of this amount [Estimate date: July 1, 2007]

  25. PCT Fee Reduction for applicants from certain countries • The international filing fee (where applicable, as reduced under item 3) and the handling fee are reduced by 90% if the international application is filed by: • an applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997); or • an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations; provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b).

  26. Why use the PCT? 3. Provides a strong basis for patenting decisions

  27. Why use the PCT? Together with the time gained (as previously explained) and the postponement of the significant costs, it is the information about the potential patentability of the invention that is received during the PCT process which is the most valuable for the PCT applicant

  28. Why use the PCT? What does this potential patentability information consist of?

  29. Why use the PCT? In Chapter I of the Treaty (before the international publication), it is the content of the International Search Report (ISR) and the Written Opinion of the International Searching Authority In Chapter II of the Treaty (after international publication), it is the content of the International Preliminary Report on Patentability (Chapter II) (IPRP (Ch. II))

  30. Why use the PCT? Symbols indicatingwhich aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc.) The claim numbersin your application towhich the document isrelevant Documents relevant to whether or not your invention may be patentable

  31. Example: content of the written opinion of the ISA Reasoning supporting the assessment Patentability assessment of claims

  32. Example: content of the international preliminary report on patentability (Ch. II) Patentability assessment of claims (usually, as amended) Reasoning supporting the assessment

  33. What does the applicant do with the information from the ISR, ISO and IPRP Ch. II? Why use the PCT? • He/she uses it as a basis for their patenting decisions--decisions about: • 1) whether to enter the national phase • 2) where to enter the national phase • Example-- • Based on the information received during both Chapters I and II, the Procter & Gamble company found that it: • --abandoned 20% of PCT filings at national phase (did not enter national phase at all anywhere); • --when it did enter national phase, it did so in only 70% of the States it had originally designated

  34. Why use the PCT? 4. Is used by the world’s major corporations, universities and research institutions when they seek international patent protection

  35. Why use the PCT? Who uses the PCT? Top PCT users in 2007 (by number of applications filed): 1. Matsushita Electric Industrial—JP (2100) 2. Philips—NL (2041) 3. Siemens—DE (1644) 4. Huawei—CN (1365) 5. Bosch—DE (1146) 6. Toyota—JP (997) 7. Qualcomm—US (974) 8. Microsoft—US (845) 9. Motorola—US (824) 10. Nokia—FI (822) 11. BASF—DE (810) 12. 3M—US (769) 13. LG Electronics—KR (719) 14. Fujitsu—JP(708) 15. Sharp—JP (702) 16. NEC—JP (626) 17. Intel—US (623) 18. Pioneer—US (611) 19. IBM—US (606) 20. Samsung—KR (598)

  36. Other PCT users Why use the PCT? Hitachi (JP) British Telecom (GB) MCI (US) AT&T (US) Boeing (US) McDonnell Douglas (US) Nestle (CH) Novartis (CH) Colgate Palmolive (US) L’Oreal (FR) Rhone Poulenc (FR) Hoechst (US y DE) Glaxo (GB) Leica (CH) Shell (NL) Elf (FR) Salomon (FR) CNRS (FR) MIT (US) University of Texas (US) CalTech (US) Johns Hopkins(US) University of Michigan (US) Columbia University (US) Wisconsin Alumni Research Foundation (US) University of Florida (US) Stanford University (US) Daimler Benz (DE) Volvo (SE) Ford (US) Nissan (JP) Renault (FR) Honda (JP) Kawasaki (JP)

  37. Why use the PCT? • 5. apply securely and easily online, and save money for doing so!

  38. 1. Prepare application body: in XML using the PCT-SAFE Editor or in PDF 2. Prepare Request using free, WIPO-produced PCT-SAFE software 0101010 1010101 0101010 Signature 3. Electronically sign: WIPO Customer digital certificate or other 4. Transmit (on-line or on CD-R) 5. Receive a receipt (for on-line filings) PCT Electronic filing overview Why use the PCT?

  39. PCT efilings—up to Nov. 07

  40. PCT E-filing fee reductions Why use the PCT? • 100 Swiss francs: paper filings request printout created with PCT-SAFE diskette prepared with PCT- SAFE • 100 Swiss francs: electronic filings request not in character coded format (for ex., PDF) • 200 Swiss francs: electronic filings text of application not in character coded format (for example, PDF) • 300 Swiss francs: electronic filings text of application in character coded format (for example, XML)

  41. (3) Recent PCT Developments

  42. April 1, 2007 Amendments to the PCT Regulations Effective April 2007: • restoration of the right of priority • applications filed with parts missing (incorporation by reference) • rectification of obvious mistakes • addition of patent documents of the Republic of Korea (KR) to the PCT minimum documentation

  43. Decisions of the PCT Assembly Oct. 2007 • Two new ISAs/IPEAs INPI Brazil--plans to begin operations early 2008 Indian Patent Office--not sure • Two new publication languages (effective 01/01/09) Korean Portuguese Effective date--The amendments will apply to international applications the international filing dates of which are on or after January 1, 2009 • Supplementary international search (effective 01/01/09)

  44. Supplementary international search(Basics) • Gives applicants option of requesting one or more supplementary searches from participating ISAs in addition to the main PCT search (see Rule 45bis) • Objectives: • benefit users by reducing likelihood of new prior art in national phase • allow applicants to obtain an additional search report taking into account the growing linguistic diversity of the prior art being found • Supplementary international search (SIS) is available only to the extent and within any limitations specified by participating ISAs

  45. Supplementary international search(Applicability) • Effective date: 1 January 2009 • Available for: any international application, irrespective of the filing date, for which the time limit of 19 months to request the supplementary international search expires on or after 1 January 2009

  46. Supplementary international search(Participation by Authorities) • Authorities that intend to offer SIS from 1 January 2009: • Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation) • Nordic Patent Institute • Swedish Patent and Registration Office • Authorities that intend to offer SIS during 2009: • Austrian Patent Office • Authorities that intend to offer SIS from 1 January 2010: • European Patent Office • (National Board of Patents and Registration of Finland)

  47. Supplementary international search (Participation by Authorities) (cont.) • Participation still under consideration: • Australian Patent Office • National Institute of Industrial Property (Brazil) • State Intellectual Property Office of the People’s Republic of China • Korean Intellectual Property Office • No plans to offer SIS in the near future: • Canadian Intellectual Property Office • Japan Patent Office • Spanish Patent and Trademark Office • United States Patent and Trademark Office

  48. Supplementary international search(Requirements) • Request must be filed and fees paid to International Bureau • Fees payable (within one month from request): • supplementary search fee • supplementary search handling fee • Time limit to file request: • before expiration of 19 months from priority date • The ISA carrying out the main search cannot be selected as Authority specified for supplementary search (SSA) • The supplementary search request may be withdrawn at any time prior to the date of transmittal of the supplementary international search report through a notice addressed to the SSA or the IB

  49. Supplementary international search(Search procedure) • SIS is carried out on the international application as filed: amendments under Articles 19 and/or 34 will not be considered • Where ISA found lack of unity of invention, applicant can request SSA to carry out SIS on other than main invention • SSA begins SIS at the latest by expiration of 22 months from priority date • Supplementary international search report (SSR) to be established within 28 months from the priority date • SSR transmitted to applicant and International Bureau

  50. Current and future PCT-related projects • Priority document digital access service (DAS) • Private file inspection • Extension of national phase entry information - 34 Offices currently providing data, with 2.6 million national phase notifications, updated monthly • Patent landscaping tools – graphical overview of search results (top applicants, origin, IPC, etc.) • XML processing and publication • Terminology database/multilingual search • National patent collections • Fully electronic processing and communication

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