PCT Filings

What is a PCT

●   Patent Cooperation Treaty

●   International treaty providing a system for filing patent applications

●   For seeking patents in multiple countries around the world on the basis of a single patent application

●   Simplifies procedure

What are the benefits of the PCT system?

●   Brings world within reach – PCT application has the same legal effect as a national patent application in each of the Contracting States

●   Delays various costs

-   Translations of application

-   Official fees charged by national/regional offices

-   Fees for services of local patent agents/attorneys

●   Gives additional time to:

-   Further develop your invention

-   Explore various patenting options

-   Find investors and secure funding

-   Investigate commercial possibilities

●   Provides well-informed basis for deciding entry into national/regional phase

How many contracting states are there?

159

What is important about the contracting states?

At least one applicant must be a national/resident of one of the contracting states

What does the Receiving Office do?

• Receives the PCT application and related fees

• Checks whether application complies with formal requirements

What happens if PCT application is filed at the wrong RO?

The application gets transmitted to the International Bureau (IB)

Filing Date

Official date application is submitted to RO

Priority date

Date of initial filing date that is used to measure deadlines from

Why is the priority date important?

Used to establish novelty/obviousness/inventive step

What is the deadline for claiming priority?

12 months from initial filing date

What must a PCT application include?

-   Request

-   Description

-   One or more claims

-   Abstract

-   Drawings where required

-   Sequence listing where required

What does the International Search Report show?

Prior art, including patent and non-patent documents

What is included in the Written Opinion?

Opinion from International Searching Authority on Patentability

• Unity

• Clarity

• Novelty

• Inventive step

• Industrial application

• Sufficiency

Unity of Invention

Application must either relate to one invention or to a group of inventions which share a common technical feature so as to form a single general inventive concept

Clarity of invention

Is the application clear and concise

Novelty

An invention is considered to be new if it does not form part of the state of the art

Inventive step

An invention is taken to include an inventive step if it is not obvious to a person not skilled in the art

Sufficiency

Patent application must disclose the invention in a manner clear and complete enough for a notional person skilled in the art to carry it out without undue burden

What happens if you choose to not file a demand for international preliminary examination?

WIPO will attach a cover sheet to written opinion - converts WO into International Preliminary Report on Patentability Chapter I

What are Article 19 amendments?

Are in response to the ISR/WO

Amending the claims only