Drafting, Filing and Processing of PCT Applications

Drafting, Filing and Processing of
PCT Applications
Mikhail GAVRIKOV
WIPO
Vilnius, Lithuania
April 16, 2014
What does РСТ filing include?
Findings prior to PCT application drafting starts:
when to file application?
where to file?
language of an application?
how to file?
which ISA to choose?
Application drafting
Furnishing of PCT application with a Receiving Office
PCT fees payment
PCT filing may be considered accomplished only when
Form IB/301 has been received from the International
Bureau (or upon receipt Form RO/105 in a case RO/IB)
Filing-2
08.10.12
Procedural findings prior to
PCT application drafting
Filing-3
08.10.12
Where to file PCT application?
For nationals/residents of the Republic of Lithuania
there are three options:
State Patent Bureau of the Republic of
Lithuania (SPB) (RO/LT)
WIPO International Bureau (RO/IB)
European Patent Organization (RO/EP)
WARNING: Observation of national security
provisions is applicant’s responsibility
Filing-4
08.10.12
Comparison of RO/LT and RO/IB
RO / LT
Accepted filing languages
LT,RU,EN
RO / IB
any
Language of request
RU,EN
any of
publication languages
Competent ISA / IPEA
RU, EP
at least
RU, EP
PCT-EASY filing
electronic filing
Language of communication
yes
PCT-SAFE, EPO-OLF
application language
yes
ePCT, PCT-SAFE
EN, FR
Transmittal fee
yes
no*
Power of attorney is required
no
no
yes
(“due care”)
yes
(both criteria)
Fee for restoration of the right of priority
yes
no
e-mail communication
no (?)
yes
Restoration of the right of priority
Filing-5
08.10.12
* for applicants who is entitled for fees reduction
When to file a PCT application?
Option 1: РСТ filing in the end of priority period
(months)
0
12
National filing
International
publication
16
18
PCT filing ISR
Option 2: РСТ filing as first filing (no priority claiming)
(months)
Filing-6
08.10.12
0
9
PCT filing
ISR
International
publication
18
16
How to file: different options
Media of application:
on paper
PCT-EASY mixed mode (fee reduction)
fully in electronic format (more fee reduction)
Methods of filing:
regular mailing services
by facsimile
online filing
Web-based services (ePCT)
specialized software (PCT-SAFE)
Filing-7
08.10.12
PCT filing by Medium of Filing
Filing-8
08.10.12
Filing structure in 2013: paper 7,4%; PCT-EASY 2,6%; fully electronic 90%
(in PDF format 49%)
Which ISA to choose?
Competent RO
Competent ISA
Competent IPEA
RO / LT
ISA / EP
IPEA / EP
ISA / RU
IPEA / RU
RO / IB
RO / EP
Filing-9
08.10.12
Choice of International Searching
Authority
Search cost
Timeliness performance indicator
Area of technology
Desire for more diversified (broader) search
Limitations on selection of the IPEA
Available Supplementary International Searching
Authorities
Potential reduced national/regional search fees
Potential effect on national/regional phase entry strategy
Personal preference
Effect on the availability of PCT/PPH
Filing-10
08.10.12
Comparison of ISA / RU and ISA / EP
ISA / RU
ISA / EP
Accepted languages
RU, EN
EN, FR, DE
Limitations on selection IPEA
RU, EP
EP
Competence regarding to methods of treatment
yes
no
Sequence listing in electronic form
yes
yes
RU, EN
EN, FR, DE
yes
yes
Language of communication
SIS service
Search fee
Protest fee
Filing-11
08.10.12
6’750/28’000RUB 1’875 EUR
(132/550EUR)
2’700 RUB
(60 EUR)
830 EUR
PCT application drafting
Filing-12
08.10.12
Elements making up the
international application
Request (Article 3(2))
description (Article 3(2))
one or more claims (Article 3(2))
abstract (may be filed later without affecting the international filing
date) (Articles 3(2) and 3(3))
drawings (where applicable) — later submission may, subject to
certain conditions, result in a later international filing date
(Articles 3(2) and 14(2))
sequence listing part of description (where applicable) (Rule 5.2(a))
indications containing references to deposited microorganisms or
other biological material (some designated Offices (e.g. Japan)
require that they be in the description or in the international
application on the international filing date) (Rule 13bis)
Filing-13
08.10.12
The request
Printed request form (Form PCT/RO/101)
periodically updated
available on Internet (http://www.wipo.int/pct/en/forms)
may be obtained free of charge from the receiving Office or the
International Bureau
Computer-generated request (Rules 3.1 and 3.4, Section 102(h))
layout and contents must correspond to those of the printed form
(no boxes may be omitted)
slight adjustments are permitted
any text printed in italics may be omitted
PCT-SAFE (EASY mode) request (Rule 89ter and Section 102bis)
Electronic filing of the international application in accordance with
Part 7 and Annex F of the Administrative Instructions with ROs
which accept the filing of international applications in electronic form
Filing-14
08.10.12
Concept and operation of designation
system (Rule 4.9)
Automatic and all-inclusive designation of all PCT Contracting
States
exceptions to the all-inclusive designation possible for DE, JP
and KR (countries with particular rules on “self-designation”)
but only if the international application contains a priority
claim to an earlier application filed in the State that is to be
excluded
otherwise withdrawals of designations possible
Choice of types of protection postponed until national phase entry
(e.g. patent or utility model, national or regional patent)
“Parent” information (continuation applications, patents of addition)
may be included in PCT request form for search purposes
Filing-15
08.10.12
Physical requirements of the
international application (Rule 11) (1)
A4 size paper for all the sheets (Rule 11.5)
Line spacing: 1 1/2 for pages of text in description, claims
and abstract (Rule 11.9(c))
Minimum and maximum margins for the sheets of text
and drawings (Rule 11.6)
Indication of the applicant’s or agent’s file reference
(Rule 11.6(f) and Section 109)
12 characters maximum
in the upper left-hand corner of the sheet
within 1.5 cm of the top of the sheet
Filing-16
08.10.12
Physical requirements of the
international application (Rule 11) (2)
Numbering of the sheets (Rule 11.7, Sections 207 and 311)
centered at the top or bottom of the sheets, not in the
margin
4 series: request
description, claims, abstract
drawings (if any)
sequence listing part of the description (if any)
Special requirements for drawings (Rule 11.13)
Recommendation: no text matter in the drawings (avoids
problems with translations for national phase)
Filing-17
08.10.12
Headings of the parts of the description
(Rule 5 and Section 204 of the
Administrative Instructions)
Technical Field
Background Art
Disclosure of Invention or Summary of Invention
Brief Description of Drawings
Best Mode for Carrying Out the Invention or, where
appropriate, Mode(s) for Carrying Out the Invention
Industrial Applicability
Sequence Listing
Filing-18
08.10.12
Sequence Listing Free Text
Elements accompanying PCT
application
Filing-19
08.10.12
Elements which may accompany
an international application
translation of the international application for the purposes of
international search or international publication — may be furnished later
without affecting the international filing date (Rules 12.3 and 12.4)
separate power of attorney or copy of general power of attorney — may
be filed later without affecting the international filing date (Rules 90.4
and 90.5)
priority document(s) — may be furnished until the date of international
publication (Rule 17.1)
sequence listing in electronic form complying with the Standard set out in
Annex C of the Administrative Instructions—may be furnished later
directly to the ISA without affecting the international filing date but
subject to a late furnishing fee (Rule 13ter)
Filing-20
08.10.12
separate indications concerning deposited biological material
that are not part of the international application, for ex.,
Form PCT/RO/134 (Rule 13bis)
Formats of PCT application
Filing-21
08.10.12
Media of application
All elements are on paper
Partially in electronic format:
All elements are on paper + request and abstract
being in character coded format (PCT-EASY)
Fully in electronic format:
request being in character coded format; other
elements being in image format
request, description, claims, abstract being in
character coded format
Filing-22
08.10.12
Allowable electronic document formats
Electronic formats acceptable for e-filing:
Character coded formats:
eXtensible Markup Language (XML) complying
with specification established in Annex F of the
PCT Administrative Instruction
Image formats:
Adobe Portable Document Format (PDF) version
1.4 (and lower); resolution of 300dpi (preferable);
A4; black&white; OCR disabled
alternative formats: TIFF V6.0, JFIF
Filing-23
08.10.12
How to get documents in XML?
Conversion from Microsoft Word document (.doc)
PCT-SAFE EDITOR http://www.wipo.int/pct-safe/en/download/download_editor.html
software PatXML
http://www.epo.org/applying/online-services/online-filing/auxiliary/patxml.html
WIPO online converter (pilot) https://pctdemo.wipo.int/DocConverter/
Alternative converters (JPO, KIPO)
For nucleotide and amino acid listing
software Patentln
http://www.uspto.gov/patents/resources/tools/checker/patentinrel.jsp
software BiSSAP
http://www.epo.org/applying/online-services/online-filing/auxiliary/bissap.html
Filing-24
08.10.12
PCT-SAFE EDITOR application
Filing-25
08.10.12
Furnishing PCT application with a
Receiving Office
Filing-26
08.10.12
How to submit IA: different options
Method
of filing
Medium
Paper
РСТ-EASY
Electronic format
(pdf, tiff)
Electronic format
(XML)
Filing-27
08.10.12
Mail
Facsimile
+
+
+
+
Online
-100
-200
+
-300
+
-200
+
-300
PCT fees
Filing-28
08.10.12
Fees payable to the receiving Office (RO)
transmittal fee (depending to RO)
international filing fee (for IB) (full amount
is 1’330 CHF)
search fee (for ISA) (depending to ISA)
supplement per sheet in excess of 30 (for IB) (15 CHF per sheet)
fee for priority document
late payment fee
late furnishing fee (translation of international application)
fee for requesting restoration of the right of priority
fee for copies of documents
Filing-29
08.10.12
(Fees indicated in italics are payable only in certain circumstances)
Time limits for payment of fees
Chapter I:
transmittal fee, international filing fee, search fee:
one month from the date of receipt of the
international application by the RO
(Rules 14.1(c), 15.4 and 16.1(f))
special provisions for cases where the international
application is transmitted to RO/IB under Rule 19.4
(Rule 19.4(c))
Filing-30
08.10.12
e-Filing: fee reductions
“PCT-EASY” type of filing (on paper + request and
abstract on physical medium)
CHF 100
Fully electronic type of filing with application body in
image format (for example PDF, TIFF attachments) and
only the request in character coded format (XML)
CHF 200
Fully electronic type of filing with application body and
request in character coded format (XML)
CHF 300
Filing-31
08.10.12
Modes of payment in case of RO/IB
e-payment by credit card
by bank transfer to WIPO's bank account (Swiss francs,
US dollars or euro)
by debit from a current account established with WIPO
(Swiss francs only)
by transfer to WIPO's postal account (Swiss francs only)
by check made payable to the World Intellectual
Property Organization (Swiss francs, US dollars or euro)
Filing-32
08.10.12
Calculation of fees for PCT application
filed by nationals/residents of Lithuania
Example 1 settings: application has 30 sheets, language of application:
Russian, RO/IB, ISA/RU, facilities for fees reduction have been used (e-filing)
For natural persons:
filing fees: 103CHF + 6’750RUB = 220 EUR
For legal entities:
filing fees: 1’030CHF + 100CHF + 6’750RUB = 1’065 EUR
Example 2 settings: application has 30 sheets, language of application:
English, RO/LT, ISA/EP, facilities for fees reduction have been used (e-filing)
For natural persons:
filing fees: 103CHF + 320LTL + 1’875EUR = 2’053 EUR
For legal entities:
filing fees: 1’030CHF + 320LTL + 1’875EUR = 2’818 EUR
Filing-33
08.10.12
Fee reduction for PCT application on
national phases
Expenses of applicant for the PCT filing under the example 1 were 220
EUR (previous slide)
Entries into national phases with EPO and USPTO
Full amount of
searching fee
Fee reduction
EPO
1’165 EUR
100% (ISA/EP)
190 EUR (ISA/RU)
USPTO
620 USD
130 USD
Summary national patent fees savings only for two Offices are 284 EUR
Filing-34
08.10.12
Processing PCT application:
International phase
Filing-35
08.10.12
International
Searching
Authorities
(ISA)
Inventions
International
Preliminary
Examining
Authorities
(IPEA)
transmit
Reports2
to
are the objects of
are filed with
PCT
International
Applications
communicates to
transmit applications to
Receiving Offices
grant
International Bureau
(national, regional
or international)
Designated Offices3
Patents
(national and/or regional
patent Offices)
publishes
PCT International
Applications
International Phase
Months from 0
Priority Date1
Applications
filed with
Patent Offices1
(Priority Date)
12
16
PCT International
Transmittals
Applications filed
of ISR &
with Receiving Offices
Written Opinions
(International Filing Date)
National Phase
and/or regional phase
18
22
28
30
Publications
of PCT
International
Applications
Applicants
demand
IPRP II
(optional)
Transmittals
of IPRP II
(optional)
PCT National
Phase Entries
(where applicants
seek protection)
1 Generally, applicants first file a national or regional patent application with their patent Office, and within 12 months from priority date, file a PCT international application at a receiving Office.
2 ISAs transmit International Search Reports (ISRs) & the Written Opinions / IPEAs transmit International Preliminary Reports on Patentability II (IPRP II).
3 Called Elected Offices for Applicants having filed a demand for IPRP II.
Source: World Intellectual Property Organization (WIPO)
Filing-36
08.10.12
General information
Communication with applicants
PCT International Authorities communicate with
applicants by means of PCT Forms sent by mail
and/or e-mail
Modes of communication:
regular mail services
e-mailing
private file inspection (ePCT)
Filing-37
08.10.12
Time limits computation
Kinds of time limits:
times limits that start on the priority date
(international publication, national phase entry...)
times limits that start on the international filing date
(fee payment)
periods that start on the date of a document
emanating from Authority (invitations)
Date of issue Date of actual receipt
of a document
by applicant
7 days rule
Rule 80.6
Filing-38
08.10.12
Date of mailing Time limit
response set in invitation
Actual time that applicant has for response
5 days rule
Rule 82.1(a)
Special procedures
Related to RO
withdrawals
incorporation by reference
priority right restoration
correction/addition of priority claims
Related to IB
withdrawals
amendments under Article 19
recording of changes in the
request (Rule 92bis)
Filing-39
08.10.12
Related to ISA
protest procedure
rectification of obvious mistakes
late furnishing of sequence listing
Related to IPEA
amendments under Article 34
protest procedure
rectification of obvious mistakes
International publication
Filing-40
08.10.12
International publication (1)
(Article 21 and Rule 48)
When?
Promptly after 18 months from priority date on the Internet
(www.wipo.int/pctdb/)
Publication languages:
Arabic, Chinese, English, French, German, Japanese,
Korean, Portuguese, Russian or Spanish
title, abstract and search report always (also) in English
Contents of published international application
always:
front page with bibliographic data and abstract
description, claims, and drawings, if any
international search report
Filing-41
08.10.12
International publication (2)
(Article 21 and Rule 48)
where applicable:
amended claims (and any statement) under Article 19
any declaration referred to in Rule 4.17 (Rule
48.2(a)(x))
any relevant data concerning deposited biological
material furnished under Rule 13bis (Rule 48.2(a)(viii))
information regarding requests for restoration of right of
priority (Rule 48.2(a)(xi))
statement concerning authorized requests for
rectification of obvious mistakes received after
publication (Rule 48.2(i))
information about a priority claim considered not to
have been made (Rule 26bis.2(d))
Filing-42
08.10.12
International publication (3)
(Article 21 and Rule 48)
upon applicant’s request*:
information about the applicant’s wish to correct
or add a priority claim after the expiration of the
time limit under Rule 26bis.1(a) (Rule
26bis.2(e))
refused request for rectification of an obvious
mistake (Rule 91.3(d))
* See Annex B2/IB of the PCT Applicant’s Guide for applicable fee
Filing-43
08.10.12
Filing-44
08.10.12
Communication of published
international applications (Article 20 and
Rule 47)
Paper copies of published international applications are
only sent to the applicant upon specific request
Communicated to DOs by IB
Notice of communication of the international application
sent by IB to DOs serves as conclusive evidence of
receipt of the application by DOs (Rule 47.1(c-bis), Form
PCT/IB/308 (First Notice) for DOs which do not yet apply
modified Article 22(1) and Form PCT/IB/308 (Second and
Supplementary Notice) for all other DOs)
Filing-45
08.10.12
Form of publication
Published international applications are available at
www.wipo.int/pctdb/ in electronic form only (no paper
pamphlets since 2006)
Official notices (PCT Gazette) don’t contain any more
information on international applications
Filing-46
08.10.12
Frequency of international
publication
International publication of international applications and
publication of the Official Notices takes place every
Thursday,
except where that Thursday is a day on which the
International Bureau is not open for official business,
for example, Ascension Day or the Thursday that
follows the first Sunday of September and certain
Thursdays in the Christmas/New Year period
In such cases, inquire at the International Bureau as to
what will be the publication date (possibly, but not always,
the preceding Wednesday)
Filing-47
08.10.12
Technical preparations for
international publication
The technical preparations for international publication are normally
completed 15 calendar days before the actual publication date.
For example: if the publication date is: Thursday, 24 January
2013, technical preparations are completed on Wednesday,
9 January 2013
Consequently, any document that reaches the International Bureau
on Tuesday, 8 January 2013, is still taken into account for
international publication (for example, change of name or address,
amendment of the claims under Article 19, withdrawal of the
international application or of a designation or of a priority claim)
Technical preparations may be completed more than 15 days before
the publication date where that publication date is not the “usual”
Thursday because the International Bureau is not open for business
or where there are a number of official holidays falling within that 15day period. If in doubt, inquire at the International Bureau as to what
will be the date of completion of technical preparations
Filing-48
08.10.12
Effects of international publication
International publication entitles PCT applicants to provisional
protection in the designated States, if such protection is granted
for published national applications (Article 29)
Such protection may be made conditional
on the furnishing of a translation (which may be of the
claims only)
on receipt by the designated Office of a copy of the
international application as published under the PCT, and/or
in the case of early publication under Article 21(2)(b), on the
expiration of 18 months from the priority date
For further information on the specific requirements of a given
Office, see the PCT Applicant's Guide, International Phase,
General Information (Annexes B1 and B2)
The PCT published application becomes part of the prior art as of
its international publication date (Rule 34.1(b)(ii))
Filing-49
08.10.12
Managing the international publication date
Filing-50
08.10.12
Early publication
(Article 21(2)(b) and Rule 48.4(a))
upon express request by applicant
if international search report available, no fee required
if international search report not yet available: see
the PCT Applicant’s Guide International Phase,
General Information (Annex B2/IB) for applicable fee
Filing-51
08.10.12
Postponing publication of the international
application (Rule 90bis.3(d) and (e)) (1)
How: by withdrawing the (earliest) priority claim
When: before completion of the technical preparations for
international publication
The notice of withdrawal must:
be made in writing (use of Form PCT/IB/372
recommended)
be signed by all the applicants or on their behalf (by
the appointed common agent or the appointed
common representative), and
Filing-52
08.10.12
reach the International Bureau before completion of
the technical preparations for publication
Postponing publication of the international
application (Rule 90bis.3(d) and (e)) (2)
Safeguard: the withdrawal should be made conditional
on its being received by the International Bureau on time
to postpone publication
Consequences: all time limits computed on the basis of
the priority date which have not yet expired are
recalculated on the basis of any remaining priority date or
the international filing date, in particular for:
international publication
filing of demand
entry into the national phase
Filing-53
08.10.12
Postponing publication of the international
application (Rule 90bis.3(d) and (e)) (3)
(months)
0
PCT Filing
(international filing day)
12 28.02.2013
International
publication
18
05.09.2013
Priority filing
(priority date)
01.03.2012
0
International filing date
becomes a priority date
28.02.2013
Filing-54
08.10.12
18
International
publication
28.08.2014
Preventing publication of the international
application (Rule 90bis.1(c)) (1)
How: by withdrawing the international application
When: before completion of the technical preparations for
international publication
The notice of withdrawal must:
be made in writing (use of Form PCT/IB/372
recommended)
be signed by all the applicants or on their behalf (by the
appointed common agent or the appointed common
representative), and
Filing-55
08.10.12
reach the International Bureau before completion of the
technical preparations for publication
Preventing publication of the international
application (Rule 90bis.1(c)) (2)
Safeguard: the withdrawal should be made conditional
on its being received by the International Bureau on time
to prevent publication
Consequence: the international application will not be
published and will cease to have effect
Filing-56
08.10.12
Processing PCT application:
National phase
Filing-57
08.10.12
Acts to be performed by the Applicant
Payment of the national fee
Translation of the international application (description, claims, abstract,
text matter of drawings) as originally filed**
Applicant
ONLY under Chapter I: translation of claims as amended (and any statement)
under Article 19**
ONLY under Chapter II: translation of the annexes to the international
preliminary report on patentability (Chapter II)**
In case of early entry into the national phase (i.e., before communication of
copy of the international application by IB), copy of the international
application**
Fulfillment of certain special requirements under Rule 51bis (for example,
appointment of agent, inventor’s oath or declaration, assignment, etc.) **
**
Filing-58
08.10.12
For further details on the requirements and time limits applicable in a particular
designated/elected Office, see the relevant national chapter in the PCT
Applicant’s Guide, National Phase
Designated/
Elected Office
Earlier national phase entry
Applicant can enter the national phase at any time after filing
Early national phase entry can be made in different Offices at
different times
Early national processing can only begin at the specific
request of the applicant
Once national phase processing has commenced in a country,
the national phase application is not affected by:
withdrawal of the international application
withdrawal of priority claim in the international application
If the national phase is entered before publication, a copy of
the international application must be provided to the
designated Office
No national or regional Office can require entry before 30
Filing-59 months from priority
08.10.12
National Phase Entry – Month 30
Accelerated Examination/PPH
Based on case needs, accelerated national processing and
examination is available in some countries
PCT/PPH programs are in place is some countries if the
appropriate ISA/IPEA is utilized
Some states have national procedures for accelerated
examination
EPO (PACE*) – no reason necessary
GB – will accept request based on favorable PCT results
CA – accepts request based on a variety of reasons
Other states have accelerated programs – check local
agents
Filing-60
08.10.12
* See for more details http://www.epo.org/applying/international/guide-for- applicants/html/e/ga_e_i_9.html
National phase: Deferred examination
Requesting examination – in deferred examination
countries (DE, RU...), a decision needs to be made
regarding the best time to request examination. It can be
done earlier if faster processing is desired, or it can be
deferred to help delay costs.
Regular examination request at entry
Filing-61
08.10.12
Examples of special requirements
under Rule 51bis.1 (1)
Oath or declaration by the inventor (US only)
Assignment documents (of the priority rights or of the
application)
Translation of the priority document may only be required
(Rule 51bis.1(e)):
where the validity of the priority is relevant to
the determination whether the invention is patentable
in cases of incorporation by reference
Appointment of local agent and submission of power of
attorney
Translation or other documents relating to the international
application in more than one copy
Certified translation of the international application (only
where the Office may reasonably doubt the accuracy of the
translation)
Filing-62
08.10.12
National requirements simplified for
PCT applications (1)
Priority document
The applicant does not need to furnish the priority
document since the IB transmits copies to the DO/EOs
If the DO/EO did not receive a copy of the priority
document from the IB, it must request a copy from the IB
(not from the applicant)
Drawings
If the drawings do not contain any text matter to be
translated, a simple copy of the drawings as filed is
required by a few DOs
If the drawings contain text matter to be translated, a set
of drawings containing the translated text matter needs
to be furnished
Filing-63
08.10.12
National requirements simplified for
PCT applications (2)
No legalized or certified translation of the
international application
Otherwise, a simple translation is required
A few Offices (such as, AU, GB, IN, NZ, SG, ZA)
require a "verified" translation
No special form required (but strongly
recommended) for entry into national phase
Filing-64
08.10.12
Dėkoju už dėmesį
Thank you for your attention!
Filing-65
08.10.12

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