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New Developments in the PCT
The Patent Cooperation Treaty (PCT) has now been signed by 139 countries and four regional patent systems. The latest to sign are:
- São Tomé and Principe - effective as of 3 July 2008
- Angola - effective as of 27 December 2007
- Dominican Republic - effective as of 28 May 2007
A complete list of PCT countries is available on this website.
Recent News
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London Agreement: This change to the European Patent Convention (EPC) will apply to all European patents granted by the European Patent Office (EPO) from May 1, 2008. EPO applications may be filed in either English, French or German. Until the London Agreement, when the EPO issued the patent, it was necessary to file complete translations of EPC patents into the national language in any country in which the language of the application was not an official language. The London Agreement will reduce this burden (at least, in those countries who have signed on to the Agreement) by eliminating the requirement for a translation (or, in some cases, requiring translation only of the claims). As of February 1, 2008, the following countries have signed the London Agreement: Denmark, France, Germany, Netherlands, Sweden, Switzerland, UK. Other countries are expected to sign in the future. See our PCT Countries List for details on which countries will require what.
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New EPC members: Norway and Croatia became the 33rd and 34th members of the European Patent Convention (EPC) as of 1 January 2008. It is now possible to get protection through the EPO patent system in Norway and Croatia.
PCT Changes Effective 1 July 2008
On 3 October 2007, the PCT Union adopted a number of changes to the rules, which apply to all International Applications filed on or after 1 July 2008. The principal changes, in summary, are:
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Reference to earlier searches - The applicant can request that the ISA take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office. Rules are provided for what must be given to the ISA in respect to such searches, and when. Fee refunds may be provided under such circumstances.
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Continuation or Continuation-in-Part - the applicant can indicate on the request if the application should be treated in the national phase as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition; or as an application for a continuation or a continuation-in-part of an earlier application; and if so, the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.
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Correction or Addition of Priority Claim - allows fee to be charged for correcting or adding a priority claim.
Warning about requests for Payment of Fees
The World Intellectual Property Office (WIPO), which is the agency administering the PCT system, has issued the following warning:
It has come to our attention that PCT applicants and agents are continuing to receive invitations to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT.
Whatever registration services might be offered in such invitations, they bear no connection to WIPO or to any of its official publications.
The invitations often identify a particular PCT application by its international publication number (for example: WO 03 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols. The invitations typically refer to a payment, which is to be made in euro or US dollars, by cheque and/or money transfer to an address in Germany or Switzerland. The invitations appear to come from different sources—the ones we have been informed about have come from:
- Central Data-Register of International Patents
- Register of International Patent Bulletin/ Registre des données bulletin europeén des brevetes
- Institut of Commerce for Industry, Trade,Commerce/Wirtschaftsinstitut für Industrie, Handel, Handwerk AG
- Register of International Patents
- Patent Trademark Register – Register of International Patents – ODM.
Examples of the invitations from these sources are available on the PCT website at: www.wipo.int/pct/en/warning/pct_warning.htm
PCT applicants and agents should note that it is the International Bureau of WIPO alone which publishes all PCT applications promptly after the expiration of 18 months from the priority date (see PCT Article 21(2)(a)); there is no separate fee for such international publication, and the legal effects of international publication are set out in PCT Article 29.
In case of doubt in relation to such an invitation, please contact the PCT Information Service at WIPO:
telephone: (41–22) 338 83 38
fax: (41–22) 338 83 39
e-mail: pct.infoline@wipo.int
Since April 1, 2002, there has been one standard National Filing deadline for PCT - 30 months from the priority date. It is no longer necessary to file a "Chapter II Demand" or have an International Preliminary Examination to get the benefit of the full PCT delay period. This change effected all PCT applications filed after 1 April 2002, as well as all applications with a priority date less than 20 months before that date (i.e. priority date after 1 September 2000), but only in countries which have changed their national laws to conform with this change. Since a few countries still have to change their national laws to conform to this change, there remain some exceptions to the rule (and some countries have longer deadlines, see our PCT countries list).
The following four countries are not subject to the 30-month rule, and a Chapter II demand is necessary to get the 30-(or 31-)month period for national patents in these countries: Luxembourg, Switzerland, Tanzania, Uganda. If you want to file a National Stage application in one of these countries, and do not pay the Chapter II fee before 19 months from your priority date, you will have to file National Stage before 20 months from your priority date. However, all of these countries are also members of a regional patent system (EPO or ARIPO), so you can still get protection through the regional patent up to 30/31 months without having to file nationally or Chapter II at 19 months.
Some applicants may still want to file Chapter II even after this change is fully in effect, however. For example, if you are using the European Patent Office (EPO) as the International Searching Agency, and intend to file for a European Patent in the National Stage, it would be advantageous to use the EPO in Chapter II so that when you enter the National Stage the application is already examined (and you would not need to pay the EPO to examine the application again). A positive examination report on your PCT application may well save time and money on examination while you are getting national patents in other countries, as well. (but see below, if the application is in the field of business methods). The Chapter II demand must be filed before the later of (a) three months after the transmittal of the International Search Report; or (b) 22 months from the priority date.
EPO will not accept PCT Applications
from US applicants for Business Method inventions
The EPO will not act as International Searching Authority (ISA) for PCT applications from US nationals or residents in the fields of business methods- note that this change effects any application filed or which comes up for examination after 1 March 2002.
If an application falls in this field, any inventor is a US national or resident, and no inventor is a national or resident of the EU, the applicant(s) will have to use the USPTO for the PCT search and examination.
For the EPO notice, see: http://www.european-patent-office.org/epo/pubs/oj002/01_02/01_0522.pdf
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