PCT - The International route

Concetta Larcinese & Franck Adkhis

Version: September 2014

National vs. PCT-route

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National vs. PCT-route

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The EPO and the PCT: a long standing relationship

• PCT has always been a big and still growing part of our work.• Currently 2 out of 5 search files at the EPO are PCT files. • The EPO globaly treats almost 50% of the International Preliminary

Examination Reports (IPER) in Chapter II, In Chapter I approx. 41%.• PCT files are treated exactly like EP files, both for quality and level of

service. • In 2013 approx. 82000 requests for an International Search Report

(ISR) have been filed.• EPO is International Search Authority (ISA) for approx. 42% of all PCT

files.

• The EPO has always promoted the PCT and has a strong interest in continuously improving PCT procedures.

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Known benefits of the PCT procedure (1/2)

• The 148 contracting parties make the PCT procedure the best way for an invention to obtain international protection.

• An applicant files one international application under the PCT, instead of as many filings or separate applications as there are countries in which protection is sought.

• Language commonality.• The international application is filed in a single place, generally the

national Patent Office of the applicant's country.• The standard form for an international application is accepted by all

designated Offices for the purpose of the national phase.• Fees can be paid at one time, at one Office in one currency.

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Known benefits of the PCT procedure (2/2)

• The PCT allows for more time to decide before expanding protection to different countries.

• It is consistently reported that a positive International Search Report and/or a positive International Preliminary Report on patentability, when issued by the EPO, makes national granting procedures easier.

• There is less duplication of work (provide original drawings, certified priority copies etc.)

• The International Search Report (ISR), the Written Opinion of the ISA, the Supplementary International Search Report and the International Preliminary Report on Patentability, when drafted by the EPO, are a solid basis for a good judgment on the application.

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PCT share in applications at EPO

EP

Nat + othersPCT

E-PCT bis

PCT + E-PCT: ~55%

~38%

~17% ~32%

~12%

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EPO is the ISA and IPEA

• Article 152 EPC:

The European Patent Office shall act as an International Searching Authority and International Preliminary Examining Authority within the meaning of the PCT, in accordance with an agreement between the Organisation and the International Bureau of the World Intellectual Property Organization, for applicants who are residents or nationals of a State party to this Convention. This agreement may provide that the European Patent Office shall also act for other applicants.

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EPO=ISA (1/3)

• Your PCT application is searched and pre-examined by a highly skilled European patent examiner.

• The search is done in three languages in the most complete patent documentation available worldwide.

• Examiners working together in a narrow specialized field.• EPO search engine and document Viewer are a world standard used

by many other Offices. • Automatic machine translation of e.g Asian prior art with Google's ™

translate experience.

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EPO=ISA (2/3)

• Search report comes together with a detailed opinion on patentability that is recognised as a first examination action in the subsequent regional phase at the EPO.

• EPO Searches and Opinions have an acknowledged inherent value, both as valuable technical/substantive opinion but also as means to raise venture capital.

• Timely search: WO-ISA available within 9 months (first filing).• EPO committed to provide ISR + WO-ISA in time for publication at 18

months.• Easy entry to the EP grant procedure 31 months after priority date

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EPO=ISA (3/3)

• No search fee to be paid at the EPO. • Search examiner of International Search is first examiner in the

examination procedure. • Examiners contact applicants for major clarity issues with the aim to

cover the invention for which protection is sought.• Multiple Quality Checks at different points of the procedure Quality

Management Structures. • Possibility of participation in the PCT-PPH (Patent Prosecution

Highway).

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EPO is designated/selected Office

• Reach a potential market of more than 600 milion customers. • Economically the EU is the first market for the US.• Entry in the European phase with a positive International search report

and positive Written Opinion allows an easier granting procedure.• Examination is performed by an Examining division of 3 experienced

and highly technically qualified examiners. • Multiple Quality checks on EP examination files. • EPO is currently finalizing an ISO 9001 Certification process for its

Quality management system (QMS).

• A European patent is acknowledged as a patent with the highest level of legal certainty provided by patent Offices worldwide.

• For US. applicants the European regional designation under the PCT is the single most important designation.

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Recent developments and future developments

• Commitment at highest possible level for meeting the PCT timeliness. • Equal service levels to PCT applications and EP-direct applicants

throughout the international phase ("One click application" project for RO=EP).

• Third party observations, written opinion and phone call during Chapter II.

• Improved procedures in case of Non-Unity (remove drawbacks for users of EPO as ISA/IPEA by reviewing Rule 164 EPC ).

• EPO committed to implement pro-business policies all through it's patent grant procedure and is introducing online services such as "my application" available 24/7 for applicants.

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Specific measures (1/2)

• Active awareness campaign targeting the USA on supporting innovation and contributing of patents for fostering business growth. (E.g. Cooperation with CNN).

• CPC, Cooperative Patent Classification of EPO and USPTO coming into effect on 1 January 2013. Largely inspired by European ECLA world standard for classification used e.g by CN and KR.

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Specific measures (2/2)

• More machine translation services via Google™ Translate.• Machine translations of all EU languages + CN, JP, KR and RU free of

charge for all users exclusively of EPO service on the EPO website.• Promoting the IP5 cooperation as platform for securing quality in the

patent system and strengthening the PCT (IP5: JPO, SIPO, USPTO, EPO, KIPO).

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Need more information?

• Visit www.epo.org

• Contact us at www.epo.org/contact

• Follow us on :

twitter.com/EPOorg

www.youtube.com/EPOfilms

www.facebook.com/europeanpatentoffice

www.linkedin.com/company/european-patent-office

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Need more information?

• http://www.wipo.int/pct/en

• http://www.wipo.int/pct/en/training

• http://www.wipo.int/pct/en/faqs

• http://www.wipo.int/export/sites/www/pct/en/seminar