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Patent Cooperation Treaty

Administrative Provisions of the Patent Cooperation Treaty

Administrative Provisions of the Patent Cooperation Treaty

In Chapter V of the Patent Cooperation Treaty, provisions regarding all Administrative processes and their respective offices and/or organizations are included into international patent law. Articles 53 through 56 provide for regulations and rules to be observed under the Patent Cooperation Treaty by the Assembly, the Executive Committee, the International Bureau, and the Committee for Technical Cooperation respectively.
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Article 53: The Assembly
The Assembly is to be comprised of the member states or countries signatory to the PCT. Each country shall appoint one representative or delegate. The elected delegate may also have others assisting him/her, such as alternate delegates, advisers, and certain kinds of experts. As a collective faction, the Assembly has many responsibilities as it pertains to the PCT. In essence, the Assembly is the governing body that deals with all aspects of the PCT legislation and international patents at the administrative level. Some of the key responsibilities delegated to the Assembly under the international patent law include:
Ā  Ā  Ā  Ā  Ā The maintenance and development of International Patent Cooperation Union, as well as the enforcement and implementation of the Patent Cooperation Treaty.
Ā  Ā  Ā  Ā  Ā Perform all tasks as delegated by the international patent law provided under the Treaty.
Ā  Ā  Ā  Ā  Ā Provide for direction to the International Bureau with concerns regarding conferences held for revisions of international patent law.
Ā  Ā  Ā  Ā  Ā Report to the Director General of the International Patent Cooperation Union all activities and matters related to the Union.
Ā  Ā  Ā  Ā  Ā The adoption of the triennial budget for the Union, and the approval and regulation of all financial accounts.
Ā  Ā  Ā  Ā  Ā Establish any pertaining and/or necessary committees to further the competence of the Union.
Ā  Ā  Ā  Ā  Ā The determination of allowing those states or countries not signatory to the Treaty to enter meetings as observers; this is also extended to those organizations involved with international patents–such as International Patent Search and Preliminary Examination Organizations of a non-governmental nature.
In situations where members of the Assembly must vote on particular actions to be taken by the organization, each contracting state or nation and its appointed delegate have one vote to be entered for consideration. All decisions by the Assembly require two-thirds votes in order to carry out the motion at hand. International patent law also requires that a quorum be formed by have of the contracting states or countries. This is act as a form of checks and balances when certain motions regarding decisions upon the Assembly itself are to be voted on. A majority decision is also implemented in the case of decisions regarding the Assembly.
It is also mandated that an Executive Committee be formed once the number of signatory nations reaches forty. Originally, it was instated that the Assembly would approve and regulate the triennial budget program, as well as any other programs created by the Director General. However, a provision under this article explicitly limits this action “Until the Executive Committee has been established.” The Assembly is to meet under the request of the Director General, or by a one-fourth vote of the contracting states or nations.
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Article 54: The Executive Committee
In the event that an Executive Committee would be established under the provisions set forth in Article 53, the PCT provided enough insight to include regulations and procedures to be delegated to the Committee upon its inception. The Executive Committee is formed by members of the Assembly, which allows for one delegate of each contracting nation to appointed, along with any others needed to assist the appointed delegate. The Committee is to be comprised of one-fourth of the members of the Assembly.
In the case that the total number of Assembly members exceeds a division by the number of four, only the immediate number of seats is to be considered and the others are not included. Members of the Committee are on active duty from the close of an Assembly meeting, to the next installment of an Assembly session. The Executive Committee is to establish its own regulations regarding the election of members, and such members can be re-elected as long as no more than two-thirds are considered for a new term. Other responsibilities and duties of the Executive Committee are:
Ā  Ā  Ā  Ā  Ā The preparation of the agenda of the Assembly.
Ā  Ā  Ā  Ā  Ā The submission of proposals to the Assembly for program changes and the budget of the Union that are prepared by the Director General.
Ā  Ā  Ā  Ā  Ā Provide for reports, as well as yearly audit reports on accounts to the Assembly.
Ā  Ā  Ā  Ā  Ā The implementation of the Union programs by the Director General and the decisions of the Assembly. This also extends to include the addressing to any particular circumstances that may arise between the two factions.
Ā  Ā  Ā  Ā  Ā When decisions affect other organizations under the Organization, taking and administering the advice as provided by the Coordinating Committee of the Organization.
Ā  Ā  Ā  Ā  Ā The Committee is to meet once a year upon request of the Director General.
Similar to the Assembly, the Executive Committee is also to have one vote for each member in the decision making processes. Also, a quorum is to be established consisting of half of the members in the Committee. The Committee is also responsible for adopting its own regulations and procedures as deemed necessary for the more efficient progress of the administrative responsibilities of the Union.
Article 55: The International Bureau
The International Bureau is the administrative faction of the World Intellectual Property Organization, or WIPO for short, located in Geneva, Switzerland. Initially created under the Madrid System for international trademark registrations, the International Bureau also has a hand in international patents and international patent law. Under the PCT, certain tasks are bestowed upon the International Bureau, which performs most of the administrative responsibilities of the of the Union. The Director General acts as the Chief Executive of the Union, and is the key representative of the Union. The International Bureau has the following responsibilities to adhere to under international patent law:
Ā  Ā  Ā  Ā  Ā The publishing of a Gazette pertaining to international patents.
Ā  Ā  Ā  Ā  Ā The Director General of the International Bureau may participate in all meetings of the Assembly and the Executive Committee. However, the Director General will not have the right to vote in decision proceedings
Ā  Ā  Ā  Ā  Ā The Director General is to be considered the ex officio secretary of the factions or organization under the Treaty.
Ā  Ā  Ā  Ā  Ā The responsibility of making the appropriate preparations for revision conferences.
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Article 56: The Committee for Technical Cooperation
Under the international patent law, the Assembly is to establish a Committee for Technical Cooperation. This Committee is to include the International Searching and Preliminary Examining Authorities as ex officio members. The purpose is to allow for such factions to have their own organization and develop their own regulations and administrative procedures. The Assembly, however, holds the responsibility of appointing the members to the Committee.
The total numbers of the Committee are to be at least double the amount of ex officio members, depending on the total number of contracting states or nations. The Committee also has the task of providing for advise and recommendations to the other factions as are required. This Committee is also in place to govern the procedures and administrative responsibilities of the International Searching Authorities and the International Preliminary Examining Authorities. The Committee is also employed to help and assist to the best of its abilities, or deal with all concepts within its jurisdictions, the Assembly and the Executive Committee.
Article 57: Finances
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The budget of the International Patent Cooperation Treaty Union is addressed under this provision. The budget of the Union, under international patent law, is to consider the income and expenses of the Union, as well as any organizations or factions in direct relation to the Union. Under the PCT international patent law, the budget shall consist of:
Ā  Ā  Ā  Ā  Ā Fees and charges for services of the International Bureau pertaining to the Union.
Ā  Ā  Ā  Ā  Ā Sales and royalty fees from publications of the International Bureau relating to the Union.
Ā  Ā  Ā  Ā  Ā Gifts and donations
Ā  Ā  Ā  Ā  Ā Rents, interests, and other income.
If, in any given year, the budget is not to cover the expenses of the involved organizations, and the year is to show a deficit, the contracting states or countries are responsible to furnish contributions to help cover the deficit. The amount to be covered by each contracting nation is to be determined by the Assembly, and will be based upon each countries’ number of international patents being processed and registered. If a particular nation fails to contribute to the deficit within two years that such request was made by the Union, it may have its right to vote in decision matters revoked.
In certain circumstances, if there are extenuating reasons that such payment was not made, the right to vote may still be instated, at the discretion of the Union. Furthermore, under this provision, it is also addressed that if a particular budget system is not implemented at the beginning of a new fiscal period, the budget applied the previous year will be implemented. Also, a working capital fund is to be implemented, where each contracting nation contributes a single payment. The auditing for the capital fund is to be conducted by one or more of the contracting states, or an external auditing faction.

A Background to the Patent Cooperation Treaty

A Background to the Patent Cooperation Treaty

Intellectual property is a concept that is highly regarded and protected in the United States. The same is sure to be true across all nations in world. The protection of intellectual property is not only important as it applies to the owners and the actual types of intellectual property, but also the viability and potential commercial success of this kind of property. In the United States, there are various systems of legislature and regulations regarding the protection rights of intellectual property.
Among them, patent law in the United States has provided protection rights and regulations since the inception of the Patent Act of 1790. As patented inventions or innovations became a commercial success in the United States, the protection rights of patents would become a growing concern, not only on the national level, but also on the international level as well. As the United States economy would begin to grow and expand to foreign markets, the need for protection of patents across seas would become paramount. International patents would become a consideration, not just for the U.S., but for many nations across the globe. However, it would not be until 1970, when an actual agreement would be reached as to how to approach the idea of international patents.
The Patent Cooperation Treaty is an international patent treaty that allowed for patent applications to be filed to protect innovations and inventions on foreign soil. Formally titled the Washington Diplomatic Conference on the Patent Cooperation Treaty, it was held in Washington, D.C. from May 25th to June 19th of 1970, when the treaty was actually signed. The Patent Cooperation Treaty, or PCT for short, originally had eighteen nations or countries as members or signatories. The PCT would not be formally enforced until January 24th, 1978. Later on that year, the first international applications would be filed. 
As provided in its Preamble, the PCT has a specific purpose in mind. Aside from the protection of patents and inventions at an international level, other aspects such as economic development, access to technological innovations and solutions, expansion of the sciences and technology to developing countries, and the increasing the efficiency of legal systems were all ambitions that were sought out by  this treaty. All nations adhering to the Paris Convention would be eligible to become members of the PCT. As of 2009, there are 142 countries and nations that are currently members to the Patent Cooperation Treaty. Thailand would become the 142nd member of the PCT, and enforced its provisions on Christmas Eve, 2009. 
Almost all of the world’s countries have joined the PCT, with a few still yet to do so, such as Argentina and Taiwan. One of the main advantages of the international patent system created by the PCT is that is allows for a single application and registration procedure for international patent protection. It is important to note that an actual international patent does not exist, and that the PCT simply establishes for the recognition and protection of domestic patents in foreign countries. The Patent Cooperation Treaty essentially acts as a form of international patent law, which countries can adhere to in order to foresee the protection of their domestic intellectual property, and their prospective creators and inventors.

Common Provisions of the Patent Cooperation Treaty

Common Provisions of the Patent Cooperation Treaty

The Patent Cooperation Treaty addresses some more common aspects of international patent law under its Common Provisions chapter. These rules provide for a simple and general collection that address legislation regarding broad topics. However, two important considerations under the common provisions are worth note for they address a specific kind of international patent law protection in the contracting states.

These certain kinds of protection are included in Articles 43 and 44. Article 43 provides for the ability to seek certain kinds of protection, such as inventors' certificates, patents or certificates of additions, utility certificates of addition, and utility models. In certain instances, inventors or creators will seek these types of protection in the contracting states–for those that offer them–rather than an actual patent because of certain protection rights that they may grant. At the time of the international patent application submission, under international patent law, the applicant must provide for the necessary information as well as the affirmation of employing this option must be notified to the appropriate office. 

Article 44 simply relates to the option of employing two or more of these kinds of patent protection, and how the applicant is to make note of such choice apparent in the application. It is important for the applicant to know whether or not a particular contracting state or country provides for these types of patent protection rights under their national or domestic jurisdictions. Article 45 provides for a similar concept with extends the possibility for further patent protection. Under international patent law governed by the Patent Cooperation Treaty, an applicant submitting an international patent application may also decide to have the application submitted to be recognized under any regional or national treaties for patent registration. 

If the applicant deems to have an advantageous purpose, he/she may choose to have the international application to be considered as an application for a national or regional submission for registration. The nation or country elected for international patent registration may then review the application, and if it coincides with their domestic patent laws and regulations, it can be submitted for a patent grant for that particular nation. This option provides for an applicant of an international patent registration to submit for consideration patents to be granted under the contracting states through one application process.

Articles 47 through 49 provide for a more general guideline regarding broad topics to be considered under the Patent Cooperation Treaty. Articles 47 and 48 deal with the imposed time limits under PCT regulations. Though there are various time limits imposed under the legislation, the actual limits themselves are not specifically referred to in this chapter. Time limits vary depending on the various actions to be carried out by PCT standards, and are included in their specific sections of the their legislation. In this section, it simply stated that the time limits are subject to change and are at the discretion of the members of the Assembly. 

Changes in the imposed time limits under international patent law must be submitted to a vote. Only a unanimous vote will allow the amendment of the prescribed time limits in the PCT legislation. The concept of time limits in this section also includes provisions where exceptions may be considered. If there is any type of discrepancy in the transfer of information by any of the involved parties in the application and registration procedures due mail service interruptions, or loss or delay of materials in the mail. If such an instance is to occur, the time limits shall be considered as met if the necessary proof can be provided. Article 48 also provides for the authority of any contracting state or nation to excuse time limits at their discretion. Article 49 is probably the most general of the regulations under the Common Provisions of the international patent law. Contact patent lawyers to review your case.

It simply states that any person that files an international application for registration has the right to employ an attorney, a patent agent, or relevant representatives to aid in all aspects of the international patent registration procedure. It states that attorneys are entitled to practice before the International Bureau, the International Searching Authority, and the International Preliminary Examining Authority, in regards to a client's application to any of these organizations.

Implications on Patent Law in the Patent Cooperation Treaty

Implications on Patent Law in the Patent Cooperation Treaty

The Patent Cooperation Treaty definitely has an impact on patent law, and particularly, on international patent registration. In regards to the United States patent laws, however, there is no real impact that can be reflected upon the actual body of legislation or regulations. The impact itself can come in terms of the overall intention of the PCT, which was to facilitate for recognition of patent rights in foreign countries through using a single application and registration process. The PCT allows for a United States patent owner or holder to file an application under this system, and if approved, have that patent recognized by all the signatory states or countries abiding by the PCT patent law.

Furthermore, under United States patent law, if an individual files for an international patent registration within one year of the U.S. filing for patent registration, the foreign country will recognized the application as having the date of original filing in the United States. One of the key advantages provided by the PCT is that under this international patent registration system, the “national phase” of international registration can be delayed.

In other words, implementing the PCT will allow for more time to consider the implications of filing for patent rights in certain countries that filing in each individual country would not provide due to their own patent law and patent registration procedures. The reason that the Patent Cooperation Treaty has no true implications on the United States patent law system is that it is designed to be self-sufficient; in other words, the PCT is formulated as a faction apart from the domestic patent registration systems of its signatories, and simply works with them to help the international patent registration procedure be simpler.

On the international scale, the Patent Cooperation Treaty serves as the main international patent law and international patent registration system. The functionality and its structure resemble that of the Madrid System, which is an international system for the registration of trademarks–which is also governed by the International Bureau. Though there is no formal international patent to be obtained–patent rights are administered by domestic offices as if they were properly registered under their own laws–the PCT acts as a unified and extensive system designed to implement patent law and protection across world.

Though international patent registration under the PCT patent law system requires that a country be a signatory to its provisions, in certain cases, countries or nations not having membership may also be considered for international patent registration and protection rights. The effectiveness of the Patent Cooperation Treaty in securing patent protection rights in several countries through a single patent application process makes it an attractive option for countries throughout the world, thus making its implementation a more universal practice. Contact patent lawyers to review your case.

International Patent Cooperation Union in the Patent Cooperation Treaty

International Patent Cooperation Union in the Patent Cooperation Treaty

 

The Patent Cooperation Treaty has a coalition of 142 members as of 2009. The countries comprising this membership make it possible for their domestic patents to be internationally recognized and protected in a broad spectrum. The signatories to the Patent Cooperation Union make it possible for the regulations and provisions provided to become a sort of international patent law that governs patents at the international level. Though actual international patents do not exist, the PCT is established and deemed as international patent law for it creates the opportunity for protection rights in foreign countries. The signatories or members of the Patent Cooperation Treaty make up what is known as the International Patent Cooperation Union. 

This Union also has an Assembly, which meets to discuss matters pertaining to the PCT and international patent law concerns. As of 2009, the Assembly has met forty times, with the last Assembly undertaking matters as amendments to the PCT Regulations, management systems for the PCT International Authorities, and appointment of various foreign patent offices Searching and Examining Authorities for the PCT. Every signatory state or country is member of the Assembly. The overall purpose of the Assembly is to confer and discuss on various topics such as the amendment of the PCT Regulations as found under the Treaty, the budget of the Union, the regulation of imposed fees under the PCT system, and the adoption of the triennial budget program.

The Assembly itself also has established an Executive Committee. Each signatory nation may appoint one representative or delegate to the Committee. The Executive Committee is in charge of drafting the agenda for the Assembly, submitting proposals and periodical reports, and other duties as delegated by the Assembly. The Committee is to be comprised of exactly one-fourth of the number of members of the Assembly. As of its revision in 2001, the tasks and duties assigned to the can be found under Chapter V of the Patent Cooperation Treaty. Arguably, the most important task under taken by both the Assembly and the Committee is to appropriately determine and evaluate the international patent law revisions as submitted during each conference. 

The international patent law provisions under the Treaty affect in signatory nation and the effort for revisions and amendments are made in a collaborative and cohesive effort with the purpose of allowing equal representation in the Assembly, as well as securing international patent rights and protection for all of the member nations involved the Patent Cooperation Treaty. Contact patent lawyers to review your case.

Preliminary Examination to the Patent Cooperation Treaty

Preliminary Examination to the Patent Cooperation Treaty

The Patent Cooperation treaty provides an applicant with an international patent registration and the benefit of having an extensive and thorough procedure in order to qualify for an international patent and the protection of rights overseas. At the time an applicant files for an international patent registration, the individual may have the option of conducting what is called a Preliminary Examination, or often referred to as optional examination. The main purpose behind the preliminary patent examination is simply to give the applicant a more conclusive idea as to what the results for the the PCT Patent Search and Examination are going to render. 
The applicant must make a “demand” or request for the preliminary patent examination to be made, and such a request is to be made separately from the international application. The applicant for the international preliminary examination must meet and coincide with the general requirements for the application of an international patent registration. In other words, the applicant must be a resident or considered a national in the contracting state under the PCT provisions and legislation. In certain instances, the Assembly may allow for residents or nationals of a country not signatory to the PCT to apply for an preliminary patent examination as well.
As mentioned, the “demand” for a preliminary examination must be filed separately from the international application, and should contain similar information and be done in the prescribed language. It should also include which contracting states, or nations, in which the preliminary examination results should be used and considered in. The demand for preliminary examination is also subject to other considerations, such as an imposed time limit to file the demand, paying the necessary fees, and having the application for international patent registration must already be filed. 
All demands for preliminary patent examination must be submitted to the International Preliminary Examining Authority. Any further elections for adding contracting states or countries must be submitted to the International Bureau.
The International Preliminary Examining Authority is in charge of conducting the international patent examination. The International Preliminary Examining Authority is designated in accordance and approval with both the International Bureau and the Assembly. The IPEA will be evaluated and if deemed qualified to conduct such examinations, will be given approval. The IPEA is also in charge of receiving all demands for the preliminary patent examination, and all applications are to be submitted directly to that office. 
In many cases, the national patent office or Receiving Office will often be approved and qualified as an IPEA. However, in certain situations, because of matters pertaining to language barriers, or simply a Receiving Office not authorized as an IPEA, the application for preliminary patent examination may still be filed at that location, but the application itself may be forwarded to the appropriately qualified IPEA within a particular jurisdiction. 
In this case, the applicant may be invited to choose with IPEA is to conduct the actual examination, especially if there are more than one IPEA locations in that jurisdiction. However, if the International Bureau is not properly notified as to the applicant’s choice of IPEA, or the notice is not made within the time limit, the International Bureau shall consider the demand for preliminary patent examination as void.
The International Preliminary Examination has certain similarities with the International Patent Search. After all, the overall purpose for the optional examination is to simply determine how an international patent application in certain contracting states is to be considered under the PCT. This will save time and money for the applicant, if the optional examination proves for negative results in certain of the contracting states. The main objective, as stated by the PCT legislature, is to provide for an opinion on the particular invention or device being submitted for international patent recognition based on the criteria of involving inventive step, if it is novel enough or not, and if it has an industrial or commercial application. 
An invention is considered to involve inventive step if no prior art is to be found and is not overtly obvious to a skilled or trained person in the art or general subject area relating to that device. The invention is considered novel simply if no prior art exists relating to that invention. An invention is considered to have industrial application if it can be made or used in any kind of industry, as defined under the Paris Convention. The international preliminary examination may also consider any documents or information contained in the international search report for to further assist in completing and furnishing an international preliminary examination report. 
The applicant is to receive at least one written opinion, as long as the demand or request meets all of the criteria set forth under the PCT for preliminary examinations. If it does not, the applicant is allowed to make changes or amendments in terms of limiting the scope of the claims, as long as they do not affect the original international patent application. Also, a fee may be required to administer and effect those changes. If those changes are not made to satisfy the PCT requirements, the demand for preliminary examination will be considered abandoned.
If everything goes as planned and requirements are met, an international preliminary examination report shall be made within the allowed time limit. The report will essentially contain the decision as to whether or not the invention in question is to be held as patentable or not under PCT standards, as well as under the elected contracting nations’ standards as well. 
The decision of patentability will be in concordance with the prescribed criteria under the patent preliminary examination standards, any other documents used to support the decision, as well as any pertaining legislation or regulations that may apply. The report is then relayed to both the applicant and the International Bureau. It is to be translated into the appropriate and prescribed languages, and then also sent to the pertaining national offices.

Revisions and Amendments to the Patent Cooperation Treaty

Revisions and Amendments to the Patent Cooperation Treaty

The Patent Cooperation Treaty includes within its body of legislature and provisions specific regulations and instructions regarding making changes or amendments to the text of the PCT as it may be deemed necessary for future applications. In general, the amendment process to the patent treaty is to be conducted by the Assembly using a majority vote system. It is important to note that under Article 61 of the patent treaty, certain provisions are included in terms of possible revisions or amendments. 
Generally speaking, this article refers to the articles included under the Administrative Provisions of Chapter V, particularly those detailing the duties and responsibilities of the involved factions under the patent treaty, such as the Assembly, the Executive Committee, the International Bureau, and the Committee for Technical Cooperation. The scope of these regulations for each of these organizations under the patent treaty may be subject to revision in order to further facilitate the employment of the PCT. The amendment or revisions to this set of rules and legislation must be first communicated by the Director General to the contracting states or countries, with at least six months advance notice for the Assembly to behold considerations based on the proposed changes. 
The revisions may be initiated, however, by the Assembly, the Executive Committee, or the Director General under ex officio privilege. Once the changes are proposed, it will require a three-fourths majority vote by the members of the Assembly. If the proposed changes or revisions directly relate to those found in Article 61, they will be enforced one month after proper notification that the amendments are accepted. All contracting states or nations under signatory participation to the patent treaty are held liable to follow, adhere, and administer the new amendments and changes as required under the Patent Cooperation Treaty.
As of 2009, there have also been other amendments to the original text of the patent treaty. The introduction of new publication languages, Korean and Portuguese, were introduced in 2009. However, the international applications published in these languages will contain a title, search report, and abstract in English. Also, certain changes to the Supplementary International Search provisions were made–also referred to as the Preliminary Search in the PCT text–particularly a new expiration period for filing for an optional international search of 19 months. 
Also included in the patent treaty revisions is a list of the authorities participating as Preliminary Search Authorities in the various contracting states or countries. Furthermore, it also includes a list of those contracting nations still considering such participation, and those with no immediate plans for such participation. The United States Patent and Trademark Office is one of those factions that does not intend to participate as Preliminary Search Authority in the near future.
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