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The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national filing in as many member countries to the PCT as the applicant "designates" or "elects," that is, names, as countries in which patent protection is desired. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for a search and publication after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually *>30< months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. **>For those countries whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. A brief description of the basic flow under the PCT is provided in MPEP § 1842.<
The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are members of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.
The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.
In most instances a national U.S. application (NA) is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.
The international application (IA) must be filed in the prescribed receiving Office (RO)( PCT Article 10). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals ( 35 U.S.C. 361(a)). Under PCT Rule 19.1(a)(iii), the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals. The receiving Office functions as the filing and formalities review organization for international applications. International applications must contain upon filing the designation of at least one country in which patent protection is desired and must meet certain standards for completeness and formality ( PCT Articles 11(1) and 14(1)).
Where a priority claim is made, the date of the earlier filed national application is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the "priority date" for timing purposes ( PCT Article 2(xi)).
The international application is subject to the payment of certain fees upon filing, or within 1 month thereafter, and at the expiration of 12 months from the priority date or within 1 month thereafter. The receiving Office will grant an international filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections ( 35 U.S.C. 361(d)). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) ( PCT Rules 22.1 and 23). A second copy of the international application, the home copy (HC), remains in the receiving Office ( PCT Article 12(1)). Once the receiving Office has transmitted copies of the application, the International Searching Authority becomes the focus of international processing.
The basic function of the International Searching Authority (ISA) is to conduct a prior art search of inventions claimed in international applications; it does this by searching in at least the minimum documentation defined by the Treaty ( PCT Articles 15 and 16 and PCT Rule 34). **>For most applications filed with the United States Receiving Office, the applicant may choose (in the Request form) either the U.S. Patent and Trademark Office or the European Patent Office to act as the International Searching Authority. However, the European Patent Office is no longer competent to act as an International Searching Authority for certain applications filed by nationals or residents of the United States. See MPEP § 1840.01 for a discussion of applications and subject matter that will not be searched by the European Patent Office.< The International Searching Authority is also responsible for checking the content of the title and abstract ( PCT Rules 37.2 and 38.2). An international search report *>(ISR)< will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) ( PCT Rule 42). Copies of the **>international search report< and prior art cited will be sent to the applicant by the *>ISA< ( PCT Rules 43 and 44.1). The >international< search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. However, no judgments or statements as to patentability will be made ( PCT Rule 43.9). Once the international search report has been completed and transmitted, international processing continues before the International Bureau.
The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.
If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, or requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date ( PCT Rule 17). The Request form contains a box which can be checked requesting that the receiving Office prepare the certified copy. This is only possible, of course, if the receiving Office is a part of the same national Office where the priority application was filed.
The applicant has normally 2 months from the date of transmittal of the ** >international search report< to amend the claims by filing an amendment directly with the International Bureau ( PCT Article 19 and PCT Rule 46). The International Bureau will then normally publish the international application along with the search report and any amended claims (Amdt) at the expiration of 18 months from the priority date ( PCT Article 21). The international publication is in pamphlet form with a front page containing bibliographical data, the abstract, and a figure of the drawing ( PCT Rule 48). The pamphlet also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a language other than English, the search report and abstract are also published in English. The International Bureau publishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements ( PCT Rule 86). The International Bureau also transmits copies of the international application to all the designated Offices ( PCT Article 20 and PCT Rule 47).
The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.
** >PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date. Accordingly, the time period for filing the copy of the international application, the translation, and the fee under PCT Article 22 is now the same as the 30 month time period set forth in PCT Article 39. However, not all Contracting States have changed their national laws for consistency with PCT Article 22(1) as amended. Accordingly, if no "Demand" for international preliminary examination has been filed within 19 months of the priority date, the applicant may be required to complete the requirements for entering the national stage within 20 months from the priority date of the international application in some national or regional offices. When entering the national stage following Chapter I, the applicant has the right to amend the application within the time limit set forth in PCT Rule 52.1. After this time limit has expired (PCT Article 28 and PCT Rule 52), each designated Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5)).<
If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date >in one or more countries that does not honor the 30 month time limit set forth in PCT Article 22(1) as amended<, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority within 19 months of the priority date. Those states in which the Chapter II procedure is desired must be "elected" in the Demand.
The original Demand is forwarded to the International Bureau by the International Preliminary Examining Authority. The International Bureau then notifies the various elected Offices that the applicant has entered Chapter II**.
The examiner of the International Preliminary Examining Authority may comment on lack of unity of invention, note errors, and issue a written "opinion" as to whether each claim is "novel," involves "inventive step," and is "industrially applicable." If a written "opinion" is issued by the examiner, the applicant may reply to the opinion by arguments and amendments within the time period set for reply. The examiner will then issue the international preliminary examination report which presents the examiner's final position as to whether each claim is "novel," involves "inventive step," and is "industrially applicable" by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.
The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office >, however, some elected Offices provide a longer period to complete the requirements.
A listing of all national and regional offices, and the corresponding time limits for entering the national stage after PCT Chapter I and PCT Chapter II, may be found on WIPO's web site at: http://www.wipo.int/pct/en/index.html.<
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