Patent Cooperation Treaty

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INTERNATIONAL APPLICATION UNDER PCT PRESENTED BY: CHIRAG BALADHIYA, HARDIK PATEL M.PHARM SEM III DEPARTMENT OF PHARMACEUTICS 1

INTRODUCTION TO THE PATENT COOPERATION TREATY (PCT): 

INTRODUCTION TO THE PATENT COOPERATION TREATY (PCT)

ROUTES TO FILE A PATENT APPLICATION: 

ROUTES TO FILE A PATENT APPLICATION TRADITIONAL ROUTE THE PATENT COOPERATION TREATY ROUTE 3

TRADITIONAL PATENT SYSTEMS: 

TRADITIONAL PATENT SYSTEMS File Application Locally 12 File Applications Abroad Months 0 4

TRADITIONAL PATENT SYSTEM REQUIRES: 

TRADITIONAL PATENT SYSTEM REQUIRES FOR APPLICANTS: Expenses for -translations -patent attorneys -payment of fees for each Patent Office all at a time FOR EACH PATENT OFFICE: -formal examination -search -substantive examination 5

THE PCT (the Patent Cooperation treaty): 

THE PCT ( the Patent Cooperation treaty) Adopted in 1970 in washington Entered into force on 24.01.1978 Became operational on 1.6.78 with 18 contracting states As on today total 144 states are the member India joined PCT on 07.12.98 The PCT is an agreement for international cooperation in the field of patents. It is a treaty for rationalizations and cooperation with regard to the filing, searching & examination of patent applications and the distribution of the technical information. The PCT is administered by IB of WIPO, geneva, switzerland 6

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=PCT Albania Algeria Angola (27 December 2007) 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 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 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 Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Papua New Guinea Philippines Poland Portugal Republic of Korea Republic of Moldova Romania Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Senegal Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland St. Kitts and Nevis 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 144 PCT States 7

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Filing single application (the international application With a single patent office (the receiving office) In one language having effect in each contracting state (the designated office) One formal Examination ( by the receiving office ) One search ( by the international searching authority ) One international publication (by the IB of WIPO ) One optional preliminary EXAMINATION ( by the international preliminary examining authority) PCT ESTABLISHES an international system which enables: 8

Limitation of the PCT system: 

Limitation of the PCT system Provides protection for inventions by applying for patents, Not protection for Copyright & trademark 9

PCT system consists: 

PCT system consists AN INTERNATIONAL PHASE, COMPRISING: (30/31 MONTHS LONG) * Filing of international application * * International search *** International publication **** International preliminary examination (optional) A NATIONAL / REGIONAL PHASE,BEFORE: * Designated office ** Elected office . 10

PCT TIMELINE: 

PCT TIMELINE International Preliminary Examining Authority (IPEA) International Searching Authority (ISA) Invention Receiving Office (local patent office) is filed with Patent application is the object of PCT International Bureau transmit application transmit reports* publish International Publication communicate Designated Offices (foreign patent offices) Patents grant Months from Priority Date File Local Application (Priority Date) 0 16 18 22 28 30 12 File PCT Application with Receiving Office (International Filing Date) ISR & Written Opinion (IPRP I) International Publication File Demand for IPRP II (optional) IPRP II National Phase Entry (where Applicants seek Protections) * ISA transmit International Search Reports (ISR) & the Written Opinions / IPEA transmit International Preliminary Reports on Patentability II (IPRP II) (optional) International Phase National Phase 11

Competent Receiving Office (Article 10, Rule 19): 

Competent Receiving Office (Article 10, Rule 19) The patent office calcutta & its branch offices at Mumbai, Chennai, New Delhi (RO/IN) International bureau (RO/IB) 12

LANGUAGE OF FILING (Rule 12): 

LANGUAGE OF FILING (Rule 12) RO/IN—ENGLISH OR HINDI RO/IB—ANY LANGUAGE 13

Elements to accompany the International application: 

Elements to accompany the International application REQUEST (PCT/RO/101)-- Article 4 DESCRIPTION -- Article 5 ONE OR MORE CLAIMS -- Article 6 ABSTRACT -- Rule 8 DRAWING (where applicable) -- Article 7 FEES -- Rules 14,15&16 14

NO.OF COPIES REQUIRED [Rule 11.1(b)]: 

NO.OF COPIES REQUIRED [Rule 11.1(b)] RO/IN-- Four copies of each of request, Description, Claims, Drawings & Abstract if filed at Mumbai, Chennai, New Delhi Three copies of each document as mentioned above if filed in p.O . , Calcutta RO/IB--ONE 15

THE REQUEST (Article 4, Rule 3): 

THE REQUEST (Article 4, Rule 3) Printed request form (PCT/RO/101) * may be obtained free of charge: from RO/IN or from RO/IB * available on internet ( www.wipo.int ) From pct easy software downloaded free of cost from www.wipo.int site Computer- generated request * layout and contents must be same as the printed form * slight adjustments are permitted * any text printed in italics may be omitted 16

FUNCTION OF RECEIVING OFFICE: 

FUNCTION OF RECEIVING OFFICE Receiving international application for patent under pct according int. Filing no. & Date Processing/ checking of essential requirements Transmitting Record copy to ib Search copy to isa, (choosen by applicant ) Applicable fees to appropriate authority R.O. Does not perform substantive examination 17

: 

Applicant –resident or national of India Application –in English or Hindi Elements to accompany the application, a) Request b) Applicant’s name & address c) Description d) One or more claim(s) e) Designation of at least one PCT contracting state(designation to all pct contracting states are automatic now as per pct amendment) CONDITIONS FOR ACCORDING INTERNATIONAL FILING DATE: ARTICLE 11 18

PHYSICAL REQUIREMENTS OF INTERNATIONAL APPLICATION (RULE 11): 

PHYSICAL REQUIREMENTS OF INTERNATIONAL APPLICATION (RULE 11) A4 size paper for all sheet Line spacing: 1.5 cms for pages of text in description, claim & abstract Minimum & maximum margins for the sheets and drawing Drawings: should not contain text matter in the drawings, so as to avoid problem of translation for national phase 19

MARGIN REQUIREMENTS FOR TEXT (RULE 11): 

MARGIN REQUIREMENTS FOR TEXT (RULE 11) 20

MARGIN REQUIREMENTS FOR DRAWING : 

MARGIN REQUIREMENTS FOR DRAWING 21

NATIONAL SECURITY MATTERS (Rule 22 & Section 330): 

NATIONAL SECURITY MATTERS (Rule 22 & Section 330) At the patent office, Calcutta all international application for patent are referred to the expert committee for review of national security matters, and if national security clearance is refused or is not obtained the same is notified to the applicant & IB of WIPO 22

PCT FEES TO RECEIVING OFFICE (THE PATENT OFFICE ,CALCUTTA & ITS BRANCH OFFICES AT NEW DELHI, MUMBAI,CHENNAI): 

PCT FEES TO RECEIVING OFFICE (THE PATENT OFFICE ,CALCUTTA & ITS BRANCH OFFICES AT NEW DELHI, MUMBAI,CHENNAI) Transmittal fee: INR 2,000 (natural person) & INR 8,000 (legal entity) International filing fees : Basic & designation fees combined to form international (30 sheets) :filing fees - USD 1102 .All states designated. Supplement per sheet excess of 30 : USD 12 * Search fee : ISA/AT -- USD 262 , ISA/EP -- USD 1877, ISA/AU – USD 942, ISA/CN – USD 181, ISA/US – USD 1000, ISA/SE – USD 1877 Fee for preparing of certified copy of priority document and transmission the same to IB : INR 1,000--for natural person, INR 4,000--for legal entity * 75% Reduction in fees for natural person from india { Rule 14,15,16& 96 } 23

INTERNATIONAL PRELIMINARY EXAMINATION FEES * 75% FEE REDUCTION FOR NATURAL PERSON: 

INTERNATIONAL PRELIMINARY EXAMINATION FEES * 75% FEE REDUCTION FOR NATURAL PERSON IPEA FEES OF IPEA AT EUR 200 AU AUD 550 CN CNY 1,500 EP EUR 1,530* SE SEK 5,000 US USD 600 24

MODE OF PAYMENT IN USD: 

MODE OF PAYMENT IN USD To fecilitate the payment in USD, an account has been opened by RO/IN with SBI, New York branch assigning a/c no. 2111-250821-001 Indian applicant, filing international application for patent under PCT, to pay the consolidated amount in usd by D.D. Payble to the controller of patents at SBI, New York branch for payment towards basic fee, designation fee & search fee 25

COMPETENT INTERNATIONAL SEARCHING & EXAMINING AUTHORITIES (ISAs) (Article 16, Rule 35): 

COMPETENT INTERNATIONAL SEARCHING & EXAMINING AUTHORITIES (ISAs) (Article 16, Rule 35) AUSTRIAN PATENT OFFICE (AT) AUSTRALIAN PATENT OFFICE(AU) EUROPEAN PATENT OFFICE ( EP) CHINESE INTELLECTUAL PROPERTY OFFICE (CN) UNITED STATES PATENT& TRADEMARK OFFICE (US) SWEDISH PATENT OFFICE (SE) 26

COMPETENT INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES (IPEAs) (Article 32, Rule 59): 

COMPETENT INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES (IPEAs) (Article 32, Rule 59) AUSTRIAN PATENT OFFICE (AT) AUSTRALIAN PATENT OFFICE (AU) EUROPEAN PATENT OFFICE ( EP) CHINESE INTELLECTUAL PROPERTY OFFICE (CN) UNITED STATES PATENT & TRADEMARK OFFICE (US) SWEDISH PATENT OFFICE (SE) 27

ENTRY INTO NATIONAL PHASE: 

ENTRY INTO NATIONAL PHASE Entry in National Phase as later as 31 months from priority date by filing: A request on form 1 or on a plain paper containing details of international application. Pay National fees (for India 1000/4000.) Proof of right to file if applicant is not inventor. Information regarding foreign filing form 3. Declaration as to inventorship (form-5). Copy of PCT booklet with international application & search report. Copies of any amendments, preliminary examination report. 28

STEPS FOR GRANT OF A PATENT THROUGH PCT ROUTE: 

STEPS FOR GRANT OF A PATENT THROUGH PCT ROUTE Filing of an international application Formal examination by R.O. Int. Search by I.S.A. Int. Publication by WIPO Prelim. examination by I.P.E.A.(Optional) Entry into national phase in designated country Examination by designated country of patent application as per their own patent law Grant of the patent by designated country Denotes international phase Denotes national phase 29

BENEFITS OF PCT SYSTEM: 

BENEFITS OF PCT SYSTEM Fast processing of applications for grant of Patent during National Phase. Saving of time and money if search report by ISA is adverse by abandoning the application. Applicant gets 30/31 months for entry into National Phase. This time may be used to explore market values of his invention. 30

BENEFITS OF PCT SYSTEM: 

BENEFITS OF PCT SYSTEM The application for the Patent in the designated office is deemed to have been filed on the date of International filing i.e 19 or 30/31 months prior to entry to N.P. Language of filing does not affect the priority date if filed in the language accepted by R.O. Some countries provide fees reductions in fees in National Phase when comes through PCT. Priority documents need not to be filed in N.P by applicant the same is sent by the I.B., WIPO to the National Offices. No need to draft different applications for different designated offices. International application serves for all. 31

Slide 32: 

Role of WIPO in the PCT For each PCT application filed, WIPO is responsible for: – receiving and storing all application documents; – performing a formalities examination; – publishing the application; – publishing the PCT Gazette (data about the application); – translating various portions of the PCT application and certain associated documents into English and/or French, where necessary; – communicating documents to Offices and third parties; and – providing legal advice on request to Offices and users 32

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provides a framework for overall coordination of the PCT system; provides assistance to existing, new and potential Contracting States and their Offices; provides advice on implementing the PCT in the national legislation and on setting up internal procedures in the Contracting States’ patent Offices; publishes the PCT Applicant’s Guide and the PCT Newsletter; creates and disseminates PCT information via the PCT web site, paper publications and through telephone and e-mail assistance; organizes and gives PCT seminars and training courses. 33

PCT information: 

In the various PCT publications: PCT Applicant’s Guide (www.wipo.int/pct/guide/en/index.html); PCT Newsletter (monthly) ( www.wipo.int/pct/en/newslett/index.jsp ); PCT Gazette (weekly) ( www.wipo.int/pct/en/gazette/ ); PCT web site ( www.wipo.int/pct/en/ ). Telephone: (+41 22) 338 83 38 Fax: (+41 22) 338 83 39 E-mail: pct.infoline@wipo.int PCT information 34

THANKS: 

THANKS 35