Basic Patent Cooperation Treaty (PCT) Principles

I.

MAJOR CONCEPTS OF THE PCT

The Patent Cooperation Treaty (PCT) enables the U.S. applicant to

file one application, “an international application,” in a standardized format in

English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and

have that application acknowledged as a regular national or regional filing in as

many Contracting States to the PCT as the applicant “designates,” i.e., names, as

countries or regions in which patent protection is desired. The filing of an

international application will automatically constitute the designation of all

contracting countries to the PCT on that filing date. In the same manner, the PCT

enables foreign applicants to file a PCT international application, designating the

United States of America, in their home language in their home patent office and

have the application acknowledged as a regular U.S. national filing. The PCT also

provides for the establishment of an international search report and written opinion

at 16 months from the priority date and publication of the international application

after 18 months from the priority date. Upon payment of national fees and the

furnishing of any required translation, usually 30 months after the filing of any

priority application for the invention, or the international filing date if no

priority is claimed, the application will be subjected to national procedures for

granting of patents in each of the designated countries. For any countries remaining

whose national laws are not compatible with the 30 month period set forth in

PCT Article

22(1)

, the filing of a demand for an international

preliminary examination electing such countries within 19 months from the priority

date will result in an extension of the period for entering the national stage to 30

months from the priority date. An up-to-date list of such countries may be found on

WIPO’s website (

www.wipo.int/ pct/en/texts/reservations/res_incomp.html

). See

also subsection V. below

the filing of a demand for an international

preliminary examination electing such countries within 19 months from the priority

date will result in an extension of the period for entering the national stage to 30

months from the priority date. An up-to-date list of such countries may be found on

WIPO’s website (

www.wipo.int/ pct/en/texts/reservations/res_incomp.html

). See

also subsection V. below. A brief description of the basic flow under the PCT is

provided in

MPEP §

1842

.

The PCT offers an alternative route to filing patent applications

directly in the patent offices of those countries which are Contracting States of

the PCT. It does not preclude taking advantage of the priority rights and other

advantages provided under the Paris Convention and the WTO administered Agreement on

Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides

an additional and optional foreign filing route to patent applicants.

The filing, search and publication procedures are provided for in

Chapter I of the PCT. Additional procedures for a preliminary examination of PCT

international applications are provided for in optional PCT Chapter II.

In most instances, a national U.S. application is filed first. An

international application for the same subject matter will then be filed

subsequently within the priority year provided by the Paris Convention and the

priority benefit of the U.S. national application filing date will be claimed.

II.

RECEIVING OFFICE (RO)

The international application (IA) must be filed in the prescribed

receiving Office (RO)(

PCT Article 10

). The United

States Patent and Trademark Office will act as a receiving Office for United States

residents and nationals (

35 U.S.C. 361(a)

). Under

PCT Rule

19.1(a)(iii)

, the International Bureau of the World

Intellectual Property Organization will also act as a Receiving Office for U.S.

residents and nationals. The receiving Office functions as the filing and

formalities review organization for international applications

and Trademark Office will act as a receiving Office for United States

residents and nationals (

35 U.S.C. 361(a)

). Under

PCT Rule

19.1(a)(iii)

, the International Bureau of the World

Intellectual Property Organization will also act as a Receiving Office for U.S.

residents and nationals. The receiving Office functions as the filing and

formalities review organization for international applications. International

applications must contain upon filing the designation of at least one Contracting

State in which patent protection is desired and must meet certain standards for

completeness and formality (

PCT Articles 11(1)

and

14(1)

).

Where a priority claim is made, the date of the earliest-filed

application whose priority is claimed is used as the date for determining the timing

of international processing, including the various transmittals, the payment of

certain international and national fees, and publication of the application. Where

no priority claim is made, the international filing date will be considered to be

the “priority date” for timing purposes (

PCT Article 2(xi)

).

The international application is subject to the payment of certain

fees within 1 month from the date of receipt. See

PCT Rules

14.1(c)

,

15.3

, and

16.1(f)

. The

receiving Office will grant an international filing date to the application, collect

fees, handle informalities by direct communication with the applicant, and monitor

all corrections (

35 U.S.C. 361(d)

). By 13 months from the priority date, the

receiving Office should prepare and transmit a copy of the international

application, called the search copy (SC), to the International Searching Authority

(ISA); and forward the original, called the record copy (RC), to the International

Bureau (IB) (

PCT

Rules 22.1

and

23

). A second copy of the

international application, the home copy (HC), remains in the receiving Office

(

PCT Article

12(1)

)

receiving Office should prepare and transmit a copy of the international

application, called the search copy (SC), to the International Searching Authority

(ISA); and forward the original, called the record copy (RC), to the International

Bureau (IB) (

PCT

Rules 22.1

and

23

). A second copy of the

international application, the home copy (HC), remains in the receiving Office

(

PCT Article

12(1)

). Once the receiving Office has transmitted copies of

the application, the International Searching Authority becomes the focus of

international processing.

III.

INTERNATIONAL SEARCHING AUTHORITY (ISA)

The basic functions of the International Searching Authority (ISA)

are to conduct a prior art search of inventions claimed in international

applications (it does this by searching in at least the minimum documentation

defined by the Treaty (

PCT Articles 15

and

16

and

PCT Rule 34

)) and to issue a

written opinion (

PCT Rule 43bis

) which will normally be considered to be the first written

opinion of the International Preliminary Examining Authority where international

preliminary examination is demanded. See

PCT Rule

66.1bis

.

For most applications filed with the United States Receiving

Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark

Office, the European Patent Office, the Korean Intellectual Property Office, the

Australian Patent Office (IP Australia), the Israel Patent Office (ILPO), the Japan

Patent Office (JPO), or the Intellectual Property Office of Singapore (IPOS) to act

as the International Searching Authority. However, IP Australia and JPO may not be

competent to act as an International Searching Authority for certain applications

filed by nationals or residents of the United States. See

MPEP §§ 1840.01

-

1840.07

. The International Searching Authority is also

responsible for checking the content of the title and abstract (

PCT Rules

37.2

and

38.2

)

IPOS) to act

as the International Searching Authority. However, IP Australia and JPO may not be

competent to act as an International Searching Authority for certain applications

filed by nationals or residents of the United States. See

MPEP §§ 1840.01

-

1840.07

. The International Searching Authority is also

responsible for checking the content of the title and abstract (

PCT Rules

37.2

and

38.2

).

An international search report (ISR) and written opinion will

normally be issued by the International Searching Authority within 3 months from the

receipt of the search copy (usually about 16 months after the priority date)

(

PCT Rule

42

). Copies of the international search report and prior art

cited will be made available to the applicant by the ISA (

PCT Rules 43

and

44.1

). The international search report will contain a

listing of documents found to be relevant and will identify the claims in the

application to which they are pertinent. The written opinion indicates whether each

claim appears to satisfy the

PCT Article 33

criteria of

“novelty,” “inventive step,” and “industrial applicability.” The written opinion may

also indicate defects in the form or content of the international application under

the PCT articles and regulations, as well as any observations the ISA wishes to make

on the clarity of the claims, the description, and the drawings, or on the question

of whether the claims are fully supported by the description.

Once the international search report and written opinion are

established, the ISA transmits one copy of each to the applicant and the

International Bureau, and international processing continues before the

International Bureau. If a Demand for Chapter II examination is not timely filed,

the International Bureau communicates a copy of the written opinion established by

the ISA (retitled International Preliminary Report on Patentability (Chapter I of

the PCT)) to each designated Office after the expiration of 30 months from the

priority date.

IV

ureau, and international processing continues before the

International Bureau. If a Demand for Chapter II examination is not timely filed,

the International Bureau communicates a copy of the written opinion established by

the ISA (retitled International Preliminary Report on Patentability (Chapter I of

the PCT)) to each designated Office after the expiration of 30 months from the

priority date.

IV.

INTERNATIONAL BUREAU (IB)

The basic functions of the International Bureau (IB) are to maintain

the master file of all international applications and to act as the publisher and

central coordinating body under the Treaty. The World Intellectual Property

Organization (WIPO) in Geneva, Switzerland performs the duties of the International

Bureau.

If the applicant has not filed a certified copy of the priority

document in the receiving Office with the international application, requested upon

filing that the receiving Office prepare and transmit to the International Bureau a

copy of the prior U.S. national application, the priority of which is claimed, or

requested the International Bureau to obtain a copy of the earlier application from

a digital library, the applicant must submit such a document directly to the

International Bureau or the receiving Office not later than 16 months after the

priority date (

PCT

Rule 17

). The request (Form PCT/RO/101) contains a box which

can be checked requesting the receiving Office to prepare and transmit a copy of a

prior application. This is only possible, of course, if the receiving Office is a

part of the same national Office where the priority application was filed. The

request (Form PCT/RO/101) also contains a box which can be checked requesting the

International Bureau to obtain a copy of the earlier application from a digital

library

d requesting the receiving Office to prepare and transmit a copy of a

prior application. This is only possible, of course, if the receiving Office is a

part of the same national Office where the priority application was filed. The

request (Form PCT/RO/101) also contains a box which can be checked requesting the

International Bureau to obtain a copy of the earlier application from a digital

library. This is only possible if the application is registered in a digital

library, made available to the International Bureau within the prescribed time

limit, as set forth in

PCT Rule

17.1(b-bis)

, and the access code is

furnished to the International Bureau.

The applicant has normally 2 months from the date of transmittal of

the international search report to amend the claims by filing an amendment and may

file a brief statement explaining the amendment directly with the International

Bureau (

PCT

Article 19

and

PCT Rule 46

). The International

Bureau will then normally publish the international application along with the

search report and any amended claims at the expiration of 18 months from the

priority date (

PCT

Article 21

). For applications filed before July 1, 2014,

former PCT Rule 44

ter

provided that the written opinion of the

ISA would not be made publicly available until the expiration of 30 months from the

priority date. For applications filed on or after July 1, 2014, the written opinion

of the ISA and any informal comments submitted by the applicant are made available

to the public in their original language as of the publication date. The

international publication includes a front page containing bibliographical data, the

abstract, and a figure of the drawing (

PCT Rule 48

). The publication

also contains the search report and any amendments to the claims submitted by the

applicant. If the application is published in a language other than English, the

search report and abstract are also published in English

he publication date. The

international publication includes a front page containing bibliographical data, the

abstract, and a figure of the drawing (

PCT Rule 48

). The publication

also contains the search report and any amendments to the claims submitted by the

applicant. If the application is published in a language other than English, the

search report and abstract are also published in English. The International Bureau

publishes a

PCT Gazette

in the French and English languages which

contains information similar to that on the front pages of published international

applications, as well as various indexes and announcements (

PCT Rule 86

).

The International Bureau also communicates copies of the publication of the

international application to all designated Offices that have requested to receive

the publication (

PCT Article 20

,

PCT Rule 47

, and

PCT Rule

93bis.1)

.

V.

DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)

The designated Office is the national Office (for example, the

USPTO) acting for the state or region designated under Chapter I. Similarly, the

elected Office is the national Office acting for the state or region elected under

Chapter II.

PCT Article

22(1)

was amended, effective April 1, 2002, to specify that a

copy of the international application, a translation thereof (as prescribed), and

the national fee are due to the designated Office not later than at the expiration

of 30 months from the priority date. Accordingly, the time period for filing the

copy of the international application, the translation, and the fee under

PCT Article

22

is the same as the 30 month time period set forth in

PCT Article

39

. The USPTO has adopted the 30 month time limit set forth

in

PCT Article

22(1)

. Most Contracting States have changed their national

laws for consistency with

PCT Article 22(1)

as amended.

An up-to-date listing of Contracting States that have adopted

Article 22(1)

as amended is maintained at WIPO’s website at

www.wipo.int/pct/en/texts/ time_limits.html

onth time period set forth in

PCT Article

39

. The USPTO has adopted the 30 month time limit set forth

in

PCT Article

22(1)

. Most Contracting States have changed their national

laws for consistency with

PCT Article 22(1)

as amended.

An up-to-date listing of Contracting States that have adopted

Article 22(1)

as amended is maintained at WIPO’s website at

www.wipo.int/pct/en/texts/ time_limits.html

. At the time of

publication of this Chapter, only two countries have not adopted

Article 22(1)

as amended: Luxembourg (LU) and the United Republic of Tanzania (TZ). It is noted

that Luxembourg is included in the regional designation “EPO” and that the United

Republic of Tanzania is included in the regional designation “ARIPO.” For those two

remaining Contracting States that have not adopted

Article 22(1)

as amended, if no “Demand” for international preliminary examination has been filed

within 19 months of the priority date, the applicant may be required to complete the

requirements for entering the national stage within 20 months from the priority date

of the international application in the national offices of those states. When

entering the national stage following Chapter I or Chapter II, the applicant has the

right to amend the application within the time limit set forth in

PCT Rule 52.1

or

PCT Rule

78.1

, respectively. After this time limit has expired

(

PCT Article

28

or

PCT Article 41

and

PCT Rule

52

or

PCT Rule 78

), each

designated/elected Office will make its own determination as to the patentability of

the application based upon its own specific national or regional laws

(

PCT Article

27(5)

).

If the applicant desires to obtain the benefit of delaying the

entry into the national stage until 30 months from the priority date in one or more

countries where the 30 month time limit set forth in

PCT Article

22(1)

as amended does not apply, a Demand for international

preliminary examination must be filed with an appropriate International Preliminary

Examining Authority (IPEA) within 19 months of the priority date

ires to obtain the benefit of delaying the

entry into the national stage until 30 months from the priority date in one or more

countries where the 30 month time limit set forth in

PCT Article

22(1)

as amended does not apply, a Demand for international

preliminary examination must be filed with an appropriate International Preliminary

Examining Authority (IPEA) within 19 months of the priority date.

Those states in which the Chapter II procedure is

desired must be “elected” in the Demand.

PCT Rule

54bis.1

requires the Demand to be made

prior to the expiration of whichever of the following periods expires later:

(A) three months from the date of transmittal to

the applicant of the international search report or of the declaration

referred to in

PCT Article 17(2)(a)

,

and of the written opinion under

PCT Rule

43bis.1

; or

(B) 22 months from the priority date.

However, applicant may desire to file the Demand by 19

months from the priority date to extend the national stage entry deadline in

Luxembourg and the United Republic of Tanzania.

The original Demand is forwarded to the International Bureau by the

IPEA. The International Bureau then notifies the various elected Offices that the

applicant has entered Chapter II and sends a copy of any amendments filed under

PCT Article

19

and any statement explaining the amendments and the basis

for the amendments to the IPEA. See

PCT Rule 62

. The International

Bureau also sends the IPEA a copy of the written opinion established by the

International Searching Authority (ISA) unless the ISA is also acting as the IPEA.

See

PCT Rule

62.1(i)

.

VI

cant has entered Chapter II and sends a copy of any amendments filed under

PCT Article

19

and any statement explaining the amendments and the basis

for the amendments to the IPEA. See

PCT Rule 62

. The International

Bureau also sends the IPEA a copy of the written opinion established by the

International Searching Authority (ISA) unless the ISA is also acting as the IPEA.

See

PCT Rule

62.1(i)

.

VI.

INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA)

The International Preliminary Examining Authority (IPEA) normally

starts the examination process when it is in possession of:

(A) the Demand;

(B) the amount due;

(C) a translation, if the applicant is required to furnish a

translation under

PCT Rule 55.2

;

(D) either the international search report or a notice of the

declaration by the International Searching Authority (ISA) that no

international search report will be established; and

(E) the written opinion established under

PCT Rule

43bis.1

.

The IPEA shall start the international preliminary examination upon

receipt of the above materials unless the applicant expressly requests to postpone

the start of the international preliminary examination until the expiration of the

later of three months from the transmittal of the international search report (or

declaration that no international search report will be established) and written

opinion; or the expiration of 22 months from the priority date, with the exception

of the situations provided for in

PCT Rule 69.1(b) - (e)

.

The written opinion of the ISA is usually considered the first

written opinion of the IPEA unless the IPEA has notified the International Bureau

that written opinions established by specified International Searching Authorities

shall not be considered a written opinion for this purpose. See

PCT Rule

66.1bis

. Also, the IPEA may, at its

discretion, issue further written opinions provided sufficient time is available.

See

PCT Rule

66.4

lly considered the first

written opinion of the IPEA unless the IPEA has notified the International Bureau

that written opinions established by specified International Searching Authorities

shall not be considered a written opinion for this purpose. See

PCT Rule

66.1bis

. Also, the IPEA may, at its

discretion, issue further written opinions provided sufficient time is available.

See

PCT Rule

66.4

.

The IPEA establishes the international preliminary examination

report (entitled “international preliminary report on patentability”), which

presents the examiner’s final position as to whether each claim is “novel,” involves

“inventive step,” and is “industrially applicable” by 28 months from the priority

date. A copy of the international preliminary examination report is sent to the

applicant and to the International Bureau. The International Bureau then

communicates a copy of the international preliminary examination report to each

elected Office.

The applicant must complete the requirements for entering the

national stage by the expiration of 30 months from the priority date to avoid any

question of withdrawal of the application as to that elected Office; however, some

elected Offices provide a longer period to complete the requirements.

A listing of all national and regional offices, and the

corresponding time limits for entering the national stage after PCT Chapter I and

PCT Chapter II, may be found on WIPO’s website at:

www.wipo.int/pct/en/texts/time_limits.html

.

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