Prosecution under the PCT Flashcards
How many members in the PCT?
156
Prosecution under PCT is divided into:
International and National Phase
International Phase PCT Prosecution
Chapter I: Filing and receipt, international search and international publication
Chapter II: International substantive examination
National Phase PCT Prosecution
Search, examination and grant
RO - Recieving Office
The national or regional patent office where the application is filed
DO - Designated Office
Countries in respect of which the application has effect
IB - International Bureau
WIPO
ISA - International Searching Authority
You cannot choose it. For UK its the EPO, but could be USPTO.
International Preliminary Examination Authority
You choose it.
International Supplementary Searching Authority
Is there a PCT Tribunal?
No. So any interpretation of the provisions comes from PCT rules or commentators.
Who may apply under PCT?
A resident or national of a PCT contracting state or someone who possesses a real and effective industrial or commercial establishment.
Applicants can always file at the international bureau.
Designating PCT countries
Filing of request form automatically designates every country which is a part of the PCT. Then, at the time of submission, remove the others.
Some countries, like Germany, Japan or Korea need to be undesignated to protect national applications.
What is a PCT filling equivalent to?
A national filing. Same rules of assignment apply, and date of filing is carried into national law.
International application must contain:
- A request (on a request form)
- A description and drawings
- Special rules for sequence listings and biological deposits
- One or more claims
- An abstract
Declarations
Some jurisdictions require declarations, so can be included from the beginning, to avoid problems later. E.g. include
- Declaration as to the identity of the inventor (US)
- Declaration as to entitlement to claim priority (Botswana)
Transmittal
Once an international filing date is accorded, the applicant and IB is notified of that date.
If the receiving office does not transmit a copy, the applicant can take steps to ensure that a copy is sent.
Languages accepted by PCT
Arabic
Chinese
English
French
German
Japanese
Korean
Portuguese
Russian
Spanish
Claims of priority
Can claim priority from an application filed in a Paris or WTO country.
PCT Search
Conducted by an ISA
- At IPO and EPO, this will be the EPO
Conduct of search:
- Looks only for disclosure which is written
- No search in relation to use
- Does not have to search within excluded matter (52(2))
- Unity objections can be protested before the EPO
Written Opinion
ISA establishes written opinoin, which becomes the international preliminary report on patentability (Ch 1) unless a Chapter 2 is given (supplmentary international search)
Supplementary International Search
An applicant can request a supplementary international search within 22 months of priority date. In the same way as the original search.
PCT Publication
18 months after priority date or earlier if the applicant requests it.
- Rights conferred by publication accrue where it is published in English or when translation provided to Intellectual Property Office.
Third Party Observations
- These can be filed centrally (all governed by the administrative instructions)
- Must be filed electronically on PCT easy
- Applicant is given a chance to respond to the observations centrally.
Chapter II
International Preliminary Examination
International Preliminary examination
Assessment of whether an application is patenatble to an international standard.
- OPTIONAL!
Entering national phase
Lasts minimum of 30 months from priority date
- 31 months at UK and EPO
Who applies olf time limit for international phase?
Tanzania & Uganda 21 months. Luxemburg - 20 months.
If applied to Ch2 would extend to 30 months.
What happens when PCT applications enters national phase in the UK?
After paying fees and translating if necessary, application can be published.
Once published, treated as normal, with search and examination undertaken locally.
What happens when PCT applications enters national phase in the EPO?
After paying fees, it must be translated into English, French, or German.
Will undergo supplementary searches and examination.
