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Patent Cooperation Treaty

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 Search in the Patent Cooperation Treaty

International Patent Search in the Patent Cooperation Treaty

The overall purpose of the Patent Cooperation Treaty is to provide for a piece of mind to inventors that their creations are to be safe and protected under a system of international provisions and regulations. With this in mind, it is necessary to provide for a systemic approach to verify that international patent applications do not infringe on prior and existing patents. Similar to the examination process instituted by the United States patent laws, the PCT provides for an international patent search, which is necessary, particularly at the scope of an internationally protected patent. All international applications under the PCT provisions are subject to an international patent search to determine the if the innovation or invention is eligible for international protection.
The international patent search uses the claims provided in an international patent application as the foundation for the required examination and analysis of the device in question when comparing it among all other international patents. If drawings are included in the application, these will also be employed in the examination process as well. The patent searches are delegated to the International Searching Authority, which can be an authorized national or domestic patent office, or intergovernmental organization, such as the International Patent Institute. Their prime task is to search for any existing, if any, prior art that may relate, is relevant or similar to the invention in question. An International Searching Authority is approved by the Assembly of the PCT. Any patent office, or intergovernmental organization that meets the requirements of of the PCT may be eligible for approval.
The approval is conditional to the agreement of a particular national or domestic patent office, as well as the International Bureau. In certain instances, there can be more than one International Searching Authority within the jurisdiction of any particular national patent office. In such a case, the domestic office must then notify the Assembly which one is to conduct the international patent search, and is also subject to the approval of the Assembly. 
International Searching Authorities are appointed for a set period of time, that can be extended with the approval of the Assembly. Before an appointment or extension of time can be allowed for an International Searching Authority, the Assembly must hold a hearing in which such organization may provide for reasons for such an appointment or extension. The Committee for Technical Cooperation may be consulted by the Assembly to help in the decision process. Once instated, the International Search Assembly will comply by the regulations and standards of the PCT and will establish for a conclusion as to whether or not a particular international patent application is to be approved.
If the Authority finds it that a patent in question does not comply with the requirements under the search process, or it is found that prior art exists pertaining to such a patent, the Authority will have to notify the applicant of the reasons why the application will be denied, as well as the International Bureau. The findings of an international patent search are known as an international search report. An international search report is only made when the application is to be approved after the international patent search process. 
In certain cases, when the patent in question fails to meet the requirement of unity of invention, the Authority may request additional fees of the applicant to complete the application request. If the International Search Authority deems it that the application complies with all the imposed requirements under the Patent Cooperation Treaty, then an international search report will be made within the allotted time by PCT regulations. The report is relayed to the applicant as well as the International Bureau. The report will also reflect the appropriate language, and will be translated accordingly as allowed by provisions in the PCT.

International Patent Application in the Patent Cooperation Treaty

International Patent Application in the Patent Cooperation Treaty

The Patent Cooperation Treaty has its advantage of being able to file a single international patent application to achieve recognition and patent protection rights in multiple countries or nations in a single procedure. This implementation mimics or recalls a similar process employed by the Madrid Agreement, which is the international system for trademark registration and international trademark protection rights. The procedure for the international patent application is simple in the sense that only a single application is required. However, there are various steps that are undertaken to approve an international patent application. 
The first thing that must be considered is the applicants requirements. The applicant for an international patent must be a resident or national of a member state or signatory nation to the Patent Cooperation Treaty. In certain instances, the Assembly of the PCT may also recognize certain international patent application requests from a country who may not be a member under the PCT, but is a signatory to the Paris Convention. A reason this may be implemented is because all countries that are members to the PCT are required to adhere to the Paris Convention in order to be considered eligible for membership. In the case that there are various individuals or parties under one application, at least one of those must be considered a resident or national of the country in which the application is being submitted.
The international patent application itself must also contain certain requirements as outlined in the PCT. The international patent application must contain a request, a description, at least one claim, and abstract, and any drawings that maybe required. Furthermore, the application must be done in a prescribed language as allowed by the PCT. The international application must also adhere to all the physical requirements, as well as the requirements of unity of invention. Lastly, the application must be accompanied by the necessary and imposed fees. As mentioned before, the application must also provide for certain considerations that are outlined by the PCT.
The request of an international application must contain certain requirements. A written petition must be furnished that the international application is to be filed and processed under the provisions of the PCT. When the application is to be filed with the proper office in the signatory country–also known as a Receiving Office–the applicant must make note of which signatory countries the patent is to be protected and recognized in. Furthermore, if the applicant wishes to obtain a regional patent rather than a national patent in a particular signatory nation, this must also be explicitly noted. 
Logically, the name and all pertaining data to the applicant and representatives must also be included in the request. The request should have in place the title of the invention which can appropriately and distinctly identify the invention or innovation. Accompanying the international patent application must also be the description, the claim, and the drawings, if required. The description of the invention or device must provide for enough information and data so as to allow any person experienced in an applicable field to successfully reproduce and use the device in question. The claims must define the invention or innovation in a clear and concise manner so as to provide for the fullest extension of protection by international patent laws. 
If drawings are needed in order provide for a better understanding of the mechanical and functional nature of the invention, they too must be included in the international patent application. Though in certain cases drawings may not be required under PCT standards, certain signatory nations and their respective patent offices may at any time require drawings in order to more fully comprehend the nature of the innovation and device, and provide for further consideration for patent protection in that particular country. The required fees under the PCT must also be included at the time of submission of the international patent application. Once all the requirements are met, the international application is to be treated as a national patent application of that particular country. 
Once the application is submitted to and received by the appropriate Receiving Office, the second stage of the international patent application process begins. The international filing date is recorded on the date of receipt of the international patent application. The Receiving Office will then review the application in order make sure that all of the requirements are met under the PCT regulations. If there is a correction to be made, or a certain requirement was not met, the Receiving Office will notify the applicant allow for the necessary corrections to be made.  Once the corrections are submitted, the international patent registration date will reflect the date in which the corrections were submitted.
The approved international patent registration, or otherwise corrected, will then be transferred to the International Bureau and the International Searching Authority. Three copies are made, one to be kept for each faction handling the application, the home copy for the Receiving Office, the record copy for the International Bureau, and the search copy for the Searching Authority. The true copy of the application is designated to the record copy, and is considered as such. If the record copy is not received by the International Bureau within the expressed time requirement, the international patent application will be considered void. The required fees must also accompany the application. 
It is important to note that if the fees received are not paid in full or are received for certain signatory countries for registration, but not others as designated in the application, the application will only apply to those countries to which the appropriate fees are paid in full. After all the necessary examinations of application are carried out, and it can be deemed as being properly filed with all the requirement being met, the international patent application will be subject to an International Search. 
An International Search is conducted for purpose of investigating if the invention or innovation in question relating to the application has any relevant prior art in existence. An authorized International Searching Authority will conduct the examination, and will use the application’s included claims as its basis for analysis. After a thorough examination the Searching Authority will produce a written opinion regarding the patent’s application status. The report will be issued within a nine month period, or a sixteen month period if there exists a claim of priority on a first filing.
Though the process of international patent application and registration may prove to be extremely similar to that of the United States, there are certain requirements and implementations added in order to provide for a larger scope in terms of the examination of prior art; the examination is not of just one country’s patents, but of all that are signatories to the PCT. At plain sight, the application process is simple, but allowing for just one application process for multiple protection rights. However, on receiving side of the application process, it can be evident that much goes into the approval of an international patent application.

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.