Patent Cooperation Treaty (PCT)- Practice Overview

1. Patents- Practical Aspects of
International Patent Procurement/Prosecution
June 2015
Patent Cooperation Treaty
(PCT) Practice Overview

2. Patent Foreign Filing
• Options
– Directly file
– Paris Convention
– PCT (Patent Cooperation Treaty)
• Paris Convention
– Shorter deadlines to decide where to file (1 year)
– Overall, typically less expensive than PCT
• PCT
– Longer time on where to file (30 months)
– Usually, more expensive

3. Paris Convention- Overall Procedure
• Paris Convention
– Utility Patents- One year to foreign file from
original filing date
– Design Patents/Industrial Designs- Six months to
foreign file from original filing date
• What about non-Paris Convention (and non-
PCT) Countries
– Some provide a one year grace period to file
(e.g., Taiwan)
– Most have an absolute novelty requirement, so
you need to file before disclosure

4. Overall Procedure
• Paris Convention Deadlines Utility Patent
US App.
Foreign App. Foreign App. Foreign App.
One Year from
US Filing Date

5. Paris Convention- Why Pick?
• Reasons to Pick Paris Convention Filing
– Less Expensive Overall
– Less Delay
– Know the Specific Countries & Client Will Not
Change Mind in the Future
• Reasons to Not Pick Paris Convention Filing
– Uncertain where to file (e.g., not sure about
market)
– Want to delay to give more time to develop
product, market, etc.
– More fees up front with Paris Convention

6. Paris Convention
Foreign Associate
US Attorney
Foreign
IP OfficeUSPTO
One Year from
US Filing Date
Foreign
IP Office
One Year from
US Filing Date
Foreign Associate

7. PCT General Information
• Generally worldwide, about 50%
of all cases foreign filed are filed
through the PCT.
• Currently 148 country members
to PCT.
• PCT preserves your right to
foreign file for an additional 18
months.

8. PCT- Overall Procedure- Example #1
PCT App.
Foreign App. Foreign App. Foreign App.
US App.
One Year from
US Filing Date
To File
PCT Application
Generally,
30 Months from
US Filing Date
To File Foreign
Applications

9. PCT- Overall Procedure- Example #2
PCT App.
Foreign App. Foreign App. US App.
Generally,
30 Months from
PCT Filing Date
To File
Foreign & US
Applications

10. PCT General Procedure
• Filing: with a national or regional patent Office or WIPO, complying with the PCT formality requirements,
in one language, and one set of fees.
• International Search: an “International Searching Authority” (ISA) identifies the published patent
documents and technical literature (“prior art”) and establishes a written opinion on invention’s potential
patentability.
• International Publication: as soon as possible after the expiration of 18 months from the earliest filing
date, the content of international application is published.
• Supplementary International Search (optional): a second ISA identifies, at applicant’s request, published
documents which may not have been found by the first ISA which carried out the main search.
• International Preliminary Examination (optional): one of the ISAs, at applicant’s request, carries out an
additional patentability analysis.
• National Phase: after the end of the PCT procedure, usually at 30 months from the earliest priority date,
applicant starts to pursue the grant of patents directly before the national (or regional) patent Offices of
the countries in which the applicant wants to obtain them.

11. Overview of PCT System
From: http://www.wipo.int/pct/en/faqs/faqs.html

12. PCT Terminology
• Offices
• Receiving Office (RO)- office in which the International Application
must be filed. For our purposes, the USPTO will be the RO, but in
some circumstances the International Bureau (IB) will also act as
the RO for U.S. residents and nationals.
• International Searching Authority (ISA)- responsible for the patent
search and initial written opinion. In the Request form you can
select U.S., AU, Korea, EPO, etc. as the ISA. Note the EPO has
limitations as to subject matter that will be searched. The ISA is
normally responsible for the International Search Report and
Written Opinion, but the IPEA (see below) has the discretion to
issue its own written opinion.
• International Bureau (IB)- maintains the master file of all
international applications and acts as publisher as well as central
coordinating body. The World Intellectual Property Organization
in Geneva, Switzerland performs the duty of the IB.

13. PCT Terminology
• Offices
– International Preliminary Examining Authority (IPEA)- The IPEA
establishes the International Preliminary Examination Report
(IPER) which presents the examiner’s final position as to whether
the claim is novel, involves an inventive step, and is industrially
applicable. The ISA normally creates the initial written opinion, but
the IPEA has the discretion to issue its own written opinion.
– Designated Office (DO)- is the national patent office acting for the
state or region designated under Chapter I. Generally, it is where
you can nationalize the application under Chapter I. (Not that
important now.)
– Elected Office (EO)- is the national patent office acting for the state
or region elected under Chapter II. Generally, it is where you can
nationalize the application under Chapter II. (Not that important
now.)

14. PCT Terminology
• Chapter I
– Examination without interaction between
applicant and examiner
– Automatic- Default
– Examination Result= International Preliminary
Report on Patentability (IPRP) (i.e., ISA-WO)
• Chapter II
– Examination with interaction (argument) between
applicant and examiner
– Requires Filing of a Demand + Fee
– Examination Result= International Preliminary
Examination Report (IPER) (IPEA issues)

15. PCT Terminology
• Paperwork
• International Search Report (ISR)- consists
mainly of a listing of references to
published patent documents and technical
journal articles which might affect the
patentability of the invention disclosed in
the international application. The report
contains indications for each of the
documents listed as to their possible
relevance to the critical patentability
questions of novelty and inventive step
(non-obviousness).
• X= Novelty
• Y= Inventive Step
• A= Of Interest

16. PCT Terminology
• Paperwork
• Written Opinion (WO)- is a preliminary and non-binding opinion by the
ISA on whether the invention appears to meet the patentability criteria in
light of the search report results. The WO is sent together with the ISR
to the Applicant’s representative.

17. PCT Terminology
• Paperwork
• International Preliminary Report on Patentability
(IPRP)- preliminary, non-binding report on
whether the claimed invention appears to be
patentable. It is issued by the International
Bureau on behalf of the International Searching
Authority (ISA) under Chapter I of the PCT
where an International Preliminary Examination
Report (IPER) has not been or will not be
established. The report has essentially the
same contents as the written opinion of the
International Searching Authority (ISA). In other
words, if the Applicant does not file a demand
for Chapter II examination, IPRP will be the WO.

18. PCT Terminology
• Paperwork
• International Preliminary
Examination Report (IPER)- is a
preliminary, non-binding opinion,
established by the International
Preliminary Examining Authority
(IPEA) on the request of the
applicant, on the questions whether
the claimed invention appears to be
novel, to involve an inventive step
(to be non-obvious), and to be
industrially applicable. As of 1
January 2004, this report is also
known as the "international
preliminary report on patentability
(Chapter II of the PCT)"..

19. PCT History Lesson
Priority
PCT
Application
Filed
Search by
ISA
Int’l
Publication
+ ISR
Deadline to
File Demand
for Chapter II
Examination
Chapter I
National
Phase
Deadline
O
Months
< 12
Months
16
Months
18
Months
19
Months
20
Months

20. PCT History Lesson
Priority
PCT
Application
Filed
Search by
ISA
Int’l
Publication
+ ISR
Deadline to
File Demand
for Chapter II
Examination
Chapter I
National
Phase
Deadline
O
Months
< 12
Months
16
Months
18
Months
19
Months
20
Months

21. PCT History Lesson
Chapter I
National
Phase
Deadline
Chapter II
National
Phase
Deadline
2O
Months
30
Months

22. PCT History Lesson
Priority
PCT
Application
Filed
Search by
ISA
Int’l
Publication
+ ISR
Deadline to
File Demand
for Chapter II
Examination
National
Phase
Deadline
O
Months
< 12
Months
16
Months
18
Months
19
Months
30
Months

23. PCT History Lesson
• “Reservation” Countries- Gave Notice that National
Laws Not Compatible with Amended PCT
– Deadlines without Demand- Still the 20th month
Chapter I deadline to nationalize the application
–
 Only applies to a limited number of countries:
Luxemburg; Tanzania; and Uganda.
 Even if you do not file a Demand by the 19th
Month deadline and do not nationalize by the
20th Month Chapter I deadline, you can still enter
these countries by the Chapter II deadline
through regional patent offices (EPO or ARIPO).
 Filing a Demand for Chapter II examination by
the 19th month will extend the deadline to directly
nationalize in Luxemburg, Tanzania, and Uganda
to the Chapter II deadline (30th month).

24. PCT History Lesson
• ISA now issue ISR and WO
• Demand for International Preliminary
Examination (Chapter II)
– Deadline Changed to Later of:
 22 Months or
 3 Months From Mailing Date of ISR/WO
• Why Now File a Demand for Examination?
– Examiner Interaction- Get Positive IPER
– Make Amendments to Spec. and Drawings

25. PCT Pointers
• Chapter II
– Provides for additional procedures for
examination of the international application.
– Deadline to nationalize the application is at
least 30 months from the earliest priority date.
– For most countries, the application
automatically has the Chapter II deadline
 Again, exceptions are Luxemburg, Tanzania,
and Uganda,

26. PCT Pointers
• Calculation of docket
deadlines is based on the
earliest priority date
claimed.
• Chapter I and Chapter II-
distinction is less important
under current PCT practice

27. PCT Filing

28. PCT Timetable
PCT Timetable
Months from Earliest
Priority Date Deadline/Action
8th Month Send Letter to Client Requesting Foreign Filing Instructions-
What you need to do- Send the foreign filing letter.
10th-12th Month Send Reminder Letter(s)/Call Client for Foreign Filing Instructions
What you need to do- Remind client until you receive instructions
12th Month Deadline to File PCT Application
What you need to do- Prepare the PCT Request, application, and transmittal. On the Request, designate
which figure should appear on the face of the published application and add/indicate the reference
numerals that should be in the abstract for the designated figure.
14th Month Typically, receive by this deadline:
-Filing Receipt (RO/105, ISA/202 & RO/102)
-Record Copy Received by International Bureau (IB/304)
Deadline
-Restoration of Priority Deadline- In case you missed the 1 year Paris Convention Deadline
What you need to do- Report Filing Receipt to client.
16th Month Priority Document Deadline- This is the final deadline to update your priority claim as well as submit
certified copies of the applications from which you are claiming priority. Normally list the priority
applications on the Request when the application is filed. This deadline only applies when waiting on the
application number for the international application.
What you need to do- Make sure your priority claim is correct.

29. PCT- Short Flow Chart
Priority
PCT
Application
Filed
Restoration
of Priority
Deadline
Search by
ISA
Int’l
Publication
+ ISR
Deadline to
File
Demand for
Chapter 1
Countries
O
Months
< 12
Months
14
Months
16
Months
18
Months
19
Months

30. PCT- Short Flow Chart
Chapter 1
Deadline to
Nationalize
Deadline-
Demand
Examination
& Response
to Written
Opinion
Examination
by IPEA
Target Date
to Issue
IPRP by ISA
(for Chapter
1) or IPEA
(Chapter 2)
Chapter 2
Deadline
(Most
Countries)
Chapter 2
Deadline (A
Few
Countries)
20
Months
28
Months
30
Months
31
Months
22
Months

31. PCT Application- Pre-filing Checklist
 Get Applicant and Inventor Information
Nationality may impact Receiving Office (RO)
Foreign Filing License Granted/Needed
 Pick Receiving Office (RO)
 USPTO
 IB
 Pick International Searching Authority (ISA)
 Speed, Price, Where Nationalizing, etc.
 Prepare Paperwork (format A4)

32. PCT Filing- Typical Flow
US Attorney
USPTO (RO) Int’l Bureau (IB)
PCT
Application
Request
PCT
Application
Request Contents
• Inventor(s)/Applicant(s)
• Designate Agent
• Not Designate Countries (DE, JP, KR)
• Priority Claim & Documents
• Pick Int’l Searching Authority (ISA)
• Representative Figure

33. PCT Filing- Unusual Flow
US Attorney Int’l Bureau (IB) + RO
PCT
Application
Request
Directly File with IB
• No Applicant is US Resident or
National (but a resident/national of
PCT Contracting State)
• Restoration of Priority- within 2 month
window after 12 Month Paris
Convention Deadline

34. PCT Receiving Office (RO)
• How to Pick a Receiving Office (RO)
– Depends on where applicant is a national or
residence
• Two Options
– Applicant’s National Patent Office (if allowed)
 Normally, USPTO
– WIPO International Bureau (IB)
• From US Perspective, if no US Applicant,
need to file with IB as RO and pick local
attorney to prosecute.

35. Filing USPTO as Receiving Office (RO)
1. Familiarity with E-filing procedures.
2. File pdf’s of documents.
3. Instant Electronic Acknowledgment.
4. Payment via Credit Card in US Dollars.
5. Access to Documents in Private PAIR.
6. For invention made in the US, no separate
request for a foreign filing license is needed.

36. Filing WIPO-IB as Receiving Office (RO)
1. Will need to obtain a WIPO Digital Certificate
for each person who will physically file the
applications.
2. The Digital Certificate must be used ONLY
on the computer on which it was validated.
3. The Digital Certificate must be renewed
every two years.
4. Will need to download and use PCT Easy
software, which needs updating regularly.

37. Filing WIPO-IB as Receiving Office (RO)
5. Will need to open a WIPO Deposit Account
1. Otherwise, file an application at the
International Bureau, then receive a link
electronically to make an Epayment on WIPO
via credit card.
2. You may have added conversion fees from US
$ to Swiss francs on your credit card bill.
3. Pay by bank transfer to WIPO’s bank account
or postal account
6. Will never have access to complete file
history.

38. Filing WIPO-IB as Receiving Office (RO)
7. If invention made in the US, you will need a
foreign filing license from the USPTO to file a
PCT application at the IB.
8. Can file via fax; however, original must be
delivered within 14 days from the fax
transmission (FedEx preferred).
9. Lose valuable filing time since WIPO is six
hours ahead of us.

39. PCT Searching Authorities (ISA)
• Right Now, You Can Select From Among
Several Patent Offices to Conduct the Search
• US Searching Authorities Include
– USPTO
– EPO (European Patent Office)
– KIPO (Korea)
– Australia (IPAU)
– Russia (Rospatent)
– Israel (ILPO)
• Note: Option Secondary ISA

40. PCT Searching Authorities (ISA)
Receiving Office (RO)
US or IB
ISA/US ISA/EP ISA/KR ISA/AU ISA/RU ISA/IL

41. PCT- Options to Save Money
 Below is a chart summarizing the options. Please note that the search fees
are based on October 1, 2013 figures.
ISA Office
Search
Fee
Benefits Issues
Australia $1,925
Less expensive than
Europe
Only searches applications in very
limited technology fields. For example,
it does not search all mechanical
engineering and some biotechnology
type inventions.
Europe $2,366
Perceived high
quality search
Expensive, and it will not conduct
searches for applications that concern
some types of technologies.
Korea $1,219
Inexpensive and
receive results
relatively quickly.
Limits the technology of applications
that can be searched.
United States
of America
$2080
Perceived high
quality search
Expensive and does not supply the
search report in a timely fashion
(e.g., before Chapter II deadline).

42. PCT- Options to Save Money
 Below is a chart summarizing the options. Please note that the search fees
are based on October 1, 2013 figures.
ISA Office
Search
Fee
Benefits Issues
Russia $704 Inexpensive No experience.
Israel $969 Inexpensive Limited number of applications allowed

43. Need More Information?
Please Contact:
Chuck Schmal (cschmal@uspatent.com)
Woodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317) 634-3456
www.uspatent.com

44. Patents- Practical Aspects of
International Patent Procurement/Prosecution
June 2015
Patent Cooperation Treaty
(PCT) Practice Overview