Patent Cooperation Treaty - Presentation by Vinita Radhakrishnan at UPES School of Law

2017 1

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HISTORY• International Exhibition of Invention in Vienna

(1873)• Paris Convention (1883)

– National Treatment– Priority– Common Rules

• Jurisdictional Rights• Right to Inventorship

• BIRPI - United International Bureau for the Protection of IP (1893)

• WIPO (1970): Member state led intergovernmental organization

• PCT (1978) (IN: Dec 7, 1998)• WTO/TRIPs (1995)

RIGHT TO PRIORITY

• Art 4 of Paris Convention

• Benefit from one or more earlier filed convention application within 12 months period

• For prior art purpose the later application considered to be filed on the date of first filing

• Multiple and partial priority

• Insulated from the fate of the earlier application

March 2014 Confidential 3

PRIORITY DATE

• Filing date of the application from which priority is claimed

• In case of multiple priority, filing date of the earliest

• Date of filing of the PCT application, if priority not claimed

• Priority document to be furnished– To RO within 16 months from the priority date

– To IB before publication


EXERCISE

• Inventor files an Indian patent application on 4th July 2016, disclosing invention A. Inventor files a second Indian patent application on, 9th July 2016, disclosing inventions A and B.

– What is the last date on which the inventor can file a PCT application directed to invention A?

– What is the last date on which the inventor can file a US application directed to invention A?

– What is the last date on which the inventor can file a PCT application claiming priority from both the application?

– What is the last date on which the inventor can file the application in Afghanistan?

– On 8th July 2017, the inventor wishes to file a PCT claiming both application. Comment!


EXERCISE

Apple files an application with respect to an imaging processing system in India on 1st Feb 2017. Orange files a patent application for the same image processing system on 1st March 2017 in Japan. Banana files a patent application with respect to the same invention in Myanmar on 14th Feb 2017.

– Apple, Orange and Banana file patent applications in Germany on 14th March 2018, 14th January 2018 and 14th July 2017 claiming priority from their prior applications.

– Apple, Orange and Banana file patent applications in Germany on 14th January 2018, 14th July 2017 and 14th March 2017 respectively respectively claiming priority from their prior applications.

– All 3 file patent applications in Germany on 14th March 2018.


NATIONAL TREATMENT

• Grant same protection as Nationals

• Prohibits discrimination


PCT

• Treaty signed on 19 June 1970• Entered into force on 21 January 1978 with18 contracting states• Accession- any Paris Convention member• 152 contracting states• Centralized filing system: does not eliminate the necessity of

prosecuting national patents• Objectives:

– Filing– Search and examination – Information dissemination

• Advantages– Time– Cost– Effort

PCT HIGHLIGHTS

• One set of formality requirement

• International Search

• International Publication

• International Preliminary examination

• Opportunity to amend before national phase

• Cost of multiple filings and translation postponed


MINIMUM REQUIRMENT FOR AN INTERNATIONAL FILING DATE

• Application must contain– Intention of filing International application

– Request

– Name of applicant

– Description

– at least one claim

• Not mandatory for filing date:– Fees, Signature, Title, Abstract, Drawings and

translations


PCT APPLICANT

• Natural Person/ Legal Entity

• Different applicant for different Contracting State

• At least one applicant resident/national of a contracting state


AGENT

• Any person who has the right to practice before the RO

• Any person who has the right to practice before the ISA and/or IPEA


WHERE TO FILE

• National Office

• International Bureau of WIPO

• Regional Office


EXERCISE

Mr. Helsinki from Finland develops an invention when he is working for a NGO in Ethiopia. The Ethiopian NGO wishes to file a PCT application.

What will your filing strategy be?


PCT PHASES

• International phase

• National phase

TIMELINES

INTERNATIONAL PHASE

• Various authorities involved in the International phase

– Receiving office

– International Searching Authority

– International Bureau

– International Preliminary Examination Authority (if elected)

RECEIVING OFFICE (RO) – FILING

• Determination of RO• Fees• Designating states• Elements of International application

– Request (Form PCT/RO/101)– Description– Claim(s)– Abstract,– Drawing(s) (if any)

• Do a formality examination

ELEMENTS OF AN APPLICATION

• Request• Description• Claims• Abstract • Drawings (if applicable)• Sequence listing (if applicable)• Microorganism deposition details (if applicable)• Translation (if applicable)• Priority document (if applicable)


REQUEST

• ePCT- Filing

• PCT- SAFE (fully electronic)

• Means provided by RO

• Request form: PCT/RO/101


INTERNATIONAL SEARCHING AUTHORITY (ISA): Novelty Analysis

• Objective of International Search

• Selection of ISA (AT, AU, CN, IN, EP, US, SE)

• Establishment of ISR

• Single invention/inventive concept

• Establishment of written opinion

• Assessment of invention

• Report transmission: IB and Applicant

• IPRP(I) – no demand is filed

INTERNATIONAL BUREAU (IB) –Publication

• Time of Publication

• Languages of publication

– Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish.

INTERNATIONAL PRELIMINARY EXAMINATION AUTHORITY (IPEA)

• Optional Step: Demand based (PCT/IPEA/401)

• Aim

• Filing demand for examination

• Selection of IPEA

• Formalities examination– Competent IPEA

– Time period

– Fees

• Examination– Opinion on patentability + ISR = first written opinion (IPER)

– Amendments

– Transmission of IPRP(II)

• Assessment

NATIONAL PHASE

• Regional agreements

• National fees

• Translation if required

EXERCISE

• PORTAGIN Inc. engages you for filing a PCT Application whose deadline falls on the 31st of March, 2017. On the way to the patent office you meet with a minor accident and cannot make it to the office at the prescribed time.

– What can you do to save the application?


EXERCISE

• LAZYBUM, a multinational company is a client of yours who has a deadline to file a PCT application 4th July 2017. After repeated follow ups they finally give you a go ahead to file the PCT on the early morning of 5th July 2017

– What will be your filing strategy?


EXERCISE

• SPOCKS a socks company files a PCT application on 1st Nov, 2013. It then files a US National Phase application on 1st Nov, 2016.

– Is the application valid.

– Advise


Thank You

Confidential 28

Vinita Radhakrishnan

Senior Partner - BananaIP Counsels

Email: [email protected]

Phone: +91 9845837306

2016