Protecting Your Inventions Internationally Using the PCT: A User's Perspective
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This document discusses strategies for using the Patent Cooperation Treaty (PCT) application process to protect inventions internationally. It outlines the benefits of filing a single PCT application instead of separate national applications, including reduced upfront costs. It also describes factors to consider when selecting an International Search Authority and potential benefits of different authorities. Finally, it discusses options for amending PCT applications and the Patent Prosecution Highway program for expedited national phase processing.
Protecting Your Inventions Internationally Using the PCT: A User's Perspective
- 1. Protecting Your Inventions Internationally Using the PCT A User’s Perspective Presented by Justin Cassell jcassell@wnlaw.com © 2016 Workman Nydegger
- 2. Benefits of the PCT Application ▶ One application ▶ One office ▶ One language ▶ Claim priority ▶ Easy entry into national phase Services ▶ Publication ▶ Search ▶ Written Opinion ▶ Examination (optionally) ▶ Delay national processing ▶ Forwarding of documents Amendment During Search and Examination ▶ Amendment of claims under Article 19 during Chapter I ▶ Amendment of claims and specification under Article 34 during Chapter II
- 3. Benefits of the PCT Delay ▶ Filing fees ▶ Translation costs ▶ Attorney costs ▶ Election of countries ▶ Annuities ▶ Current state of patent law Costs ▶ Defer upfront costs ▶ Reduce fees for national phase filings ▶ Manage budgets
- 4. Considerations for National Phase Applications Commercial Considerations ▶ Sophistication of Markets ▶ Sales ▶ Manufacturing ▶ Competition ▶ Technology ▶ Design around Country Considerations ▶ Commercial needs ▶ Long and short terms costs ▶ State of patent law ▶ Strength of protection and enforcement ▶ Valuation of patent and investment ▶ Exposure to lack of patents
- 5. Strategies for Using PCT Provisional Application PCT Application Non-PCT Applications National / Regional Phase Entry US EP JP CN0 mo. 12 mo. 30/31 mo. ▶Lower upfront costs with provisional application ▶Parallel prosecution of non-PCT and PCT applications ▶Delays US prosecution ▶PCT search likely before national phase entry
- 6. Strategies for Using PCT US Utility PCT Application Non-PCT Applications National / Regional Phase Entry EP JP CN 0 mo. 12 mo. 30/31 mo. ▶More upfront costs ▶PCT search report can come from non-US office ▶PCT can be route for second US application ▶First US utility patent will have 1 year shorter in term
- 7. Strategies for Using PCT Provisional Application PCT Application Non-PCT Applications National / Regional Phase Entry EP JP CN 0 mo. 12 mo. 30/31 mo. US Utility ▶Higher cost at 12 mo. point, but lower at onset ▶PCT search report can come from non-US office ▶PCT search report comes early in process ▶Flexibility with US prosecution (continuations) ▶Common patent expiration (subject to term adjustment)
- 8. Strategies for Using PCT PCT Application Non-PCT Applications National / Regional Phase Entry US EP JP CN0 mo. 12 mo. 30/31 mo. ▶Higher cost than provisional filing ▶Delays US prosecution ▶Minimize concern as to disclosure of invention ▶Flexibility to national phase entry ▶Search report received before national phase entry ▶Possibility of reduces search and examination fees ▶No PPH
- 9. International Search Authority (ISA) ▶ Classifies the technology ▶ Evaluates for multiple inventions (Unity of invention) ▶ Searches prior art in view of the inventions ▶ Prepares an International Search Report andWritten Opinion ▶ Determines the International ExaminingAuthority International Search Authority
- 10. International Search Authority Availability of the ISA ▶ The Receiving Office (RO) determines which ISAs are available ▶ Selection of RO is based on nationalities and domiciles of Applicants ▶ US Applicants can use RO/US or RO/IB ▶ May consider different RO is inventor according inventor domicile ▶ Any resident or national of PCT contracting state may file direct with RO/IB ▶ RO/US allows one of following ISAs: AU, EP, IL, JP, KR, RU, SG, US
- 11. International Search Authority 77445 42384 34185 20693 13180 3052 2569 2508 1543 1255 940 735 464 269 223 European Patent Office Japan Republic of Korea China United States of America Russian Federation Australia Canada Sweden Spain Finland Israel Brazil Austria Nordic Patent Institute 2013 2012 2011 Note: 2013 data are WIPO estimates Source: WIPO Statistics Database, February 2014 Data based on international filing year of application
- 12. International Search Authority Factors for Selecting the ISA ▶ Cost (short term and long term) ▶ Search other than RO ▶ Timeliness ▶ Subject Matter ▶ Scope and quality of search ▶ Effects on national or regional phase applications ▶ Language ▶ Potential patent prosecution highway benefits (PPH)
- 13. International Search Authority Factors for Selecting the ISA ▶ USPTO as ISA/IPEA • May eliminate or reduce search and examination fees in US national phase entry • Can pay small-entity and micro-entity designations • More expensive search fees relative to, e.g., KR, RU • Lengthy reports • Search services are outsourced, not the same USPTO examiner as with national phase entry or continuation • New search is conducted upon national phase entry • Out of order examination if no rejections or they overcome by amendment
- 14. International Search Authority Factors for Selecting the ISA ▶ EPO as ISA/IPEA • May be more comprehensive than USPTO, particularly for non- US prior art • May be more similar to use of novelty and inventive step standards outside the US • Stricter unity of invention standards • Stricter regarding subject matter • Can obtain search on all claims – more than 15 claims • Search and written opinion more direct and to point • When entering EPO, EPO considers PCT as first stage of EPO examination • EPO typically gives full, faith and credit to search • Selection of EPO as IPEA, EPO examination fee is reduced
- 15. International Search Authority Factors for Selecting the ISA ▶ KIPO as ISA/IPEA • Lower cost than USPTO and EPO • More proficiency with Korean and Japanese references • Less proficiency with European references • Looser on subject matter • Cheaper on second through nth inventions if there is a invitation to pay additional fees due to lack of unity • Better proficiency in the electronic arts
- 16. International Search Authority Timeliness ▶ISA must establish the ISR within 3 months of receipt or 9 months from priority date (whichever is later) Source: WIPO Statistics Database, March 2013 Timeliness calculated as time elapsed between priority date and date ISA transmits ISR to the International Bureau
- 17. Amending PCT Applications Article 19 Amendment ▶ Amendments are published but not examined ▶ Provide amendments for national/regional phase entry ▶ Correct errors prior to publication ▶ Claim additional embodiments Article 34 Amendment ▶ Amendments are examined but not published ▶ Arguments may be presented ▶ Work to get a positive IPRP
- 18. Patent Prosecution Highway PCT-PPH ▶ Enables an applicant with a favorable determination of the claims from an ISA/WO or IEA/IPRP to obtain expedited processing in another office ▶ Steps • PCT and US applications must have same priority date • Applicant obtain favorable PCT search report and opinion indicating patentability of one or more claims • Substantive US examination has not yet occurred • File a petition to make special for a corresponding US application under PPH, and based on ISR/WO • Claims of both applications must substantially correspond to one another • Once granted, US examination for corresponding US application is expedited