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New Developments in the PCT
The Patent Cooperation Treaty (PCT) has now been signed by 147 countries and four regional patent systems. The latest to sign are:
- Saudi Arabia - effective as of 3 August 2013
- Panama - effective as of 7 September 2012
A complete list of PCT countries is available on this website.
Recent News
- Saudi Arabia (SA) - On 3 May 2013, Saudi Arabia deposited its instrument of accession to the PCT, thus becoming the 147th Contracting State of the PCT, and on 3 August 2013, will become bound by the PCT. Consequently, any international application fi led on or after 3 August 2013 will automatically include the designation of Saudi Arabia.
- China (CN) - as of March 2013, the 30-month time limit for entering National Stage may be extended by two months, provided that the applicant pays the prescribed fee.
- Singapore (SG) - as of March 2013, the 30-month time limit for entering National Stage may be extended by three months, provided that the applicant pays the prescribed fee.
- Lithuania: Closing of the National Route via the PCT - Lithuania, which became bound by the European Patent Convention (EPC) on 1 December 2004, has informed WIPO that it will close the national route via the PCT on 4 September 2014. Therefore, as from that date, applicants desiring protection in Lithuania will no longer be able to enter the national phase in that country; they will only be able to enter the regional phase before the European Patent Office.
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 (Registration) of International Patents - RIPT
- Patent Trademark Register – Register of International Patents – ODM.
- World Intellectual Property Database (WIPD) in the Czech Republic (be particularly careful of this one, new as of late 2010 - WIPD uses a logo which is very similar to the legitimate WIPO logo and has a website which looks a lot like WIPO's)
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
Using IP Australia as International Search Agency
ISA/AU has been available as an International Searching Agency for US PCT applications since November 1, 2008. The USPTO made this announcement in a press release on September 25, 2008.
Note that there are limitations on which technologies IP Australia will accept. Specifically, IP Australia will not accept applications claiming inventions in the following International Patent Classes:
- A01-AGRICULTURE; FORESTRY; ANIMAL HUSBANDRY; HUNTING; TRAPPING; FISHING, all classes except: A01H, A01N, A01P(i.e. new plants or processes of obtaining them thereof, Preservation of human, animals bodies or plants, biocidal, pest repellent, pest attractant or plant growth regulatory activity of chemical compounds or preparations)
- A21-BAKING; EQUIPMENT FOR MAKING OR PROCESSING DOUGHS; DOUGHS FOR BAKING all classes except: A21D, (i.e. Treatment of flour or dough for baking)
- A22-BUTCHERING; MEAT TREATMENT; PROCESSING POULTRY OR FISH
- A23N-MACHINES OR APPARATUS FOR TREATING HARVESTED FRUIT, VEGETABLES OR FLOWER BULBS IN BULK
- A23P-SHAPING OR WORKING OF FOODSTUFFS
- A24-TOBACCO; CIGARS; CIGARETTES
- A41-47 PERSONAL AND DOMESTIC ARTICLES (eg. headgear (A42), footwear(A43), haberdashery (A44))
- A61-MEDICAL OR VETERINARY SCIENCE, all classes except: A61K, A61L, A61P and A61Q (i.e. preparations for medical, dental or toilet purposes, methods, apparatus for sterilising materials or objects, chemical aspects of bandages, dressings, absorbent pads, or surgical articles, therapeutic activity of chemical compounds, use of cosmetics or similar toilet preparations)
- A62-LIFE-SAVING all classes except: A62D (i.e. chemical means for extinguishing fires, processes for making harmful chemical substances harmless, or less harmful, by effecting a chemical change, composition of materials for coverings or clothing for protecting against harmful chemical agents; composition of materials for transparent parts of gas-masks, respirators, breathing bags or helmets; composition of chemical materials for use in breathing apparatus)
- A63-SPORTS; GAMES; AMUSEMENT
- B06-GENERATING OR TRANSMITTING MECHANICAL VIBRATIONS IN GENERAL
- B21, B23-B27 all except: B23K (i.e. soldering or unsoldering; welding; cladding or plating by soldering or welding; cutting by applying heat locally, e.g. flame cutting; working by laser beam)
- B31-MAKING PAPER ARTICLE WORKING PAPER
- B60-B68 all except: B60L, B60M and B60Q (i.e. electric equipment or propulsion of electrically-propelled vehicles; magnetic suspension or levitation for vehicles; electrodynamic brake systems for vehicles, in general, power supply lines, or devices along rails, for electrically-propelled vehicles, arrangement of signalling or lighting devices, the mounting or supporting thereof or circuits therefor, for vehicles in general)
- D01-D07 Textiles all except: D06L, D06M, D06N, D06P, D06Q (i.e. bleaching, treatment of fabrics, dyeing or printing textiles, decorating textiles)
- E01-E06 FIXED CONSTRUCTION
- E21-EARTH OR ROCK DRILLING; MINING
- F01-F04 MACHINES
- F15-F17 ENGINEERING ELEMENTS, ACTUATORS, STORAGE OR DISTRIBUTION OF GASES OR LIQUIDS
- F41-F42 WEAPONS, AMMUNITION
- G04-HOR0LOGY
- G06-COMPUTING; Calculating; Counting
- G10-MUSICAL INSTRUMENTS
- G11-INFORMATION STORAGE
Using Korean IP Office (KIPO) as International Search Agency
The list of subject matter that KIPO is not
obliged to search is as follows;
-
Scientific or Mathematical theories
-
Schemes, rules or methods of doing business or performing purely mental acts or playing games
-
Methods for treatment of the human body by surgery or therapy and diagnostic methods practiced on the human body
-
Mere presentation of information
-
Computer programs for which an examiner cannot search the prior art
(received from IP Korea Center Inc., - Nov. 17, 2009)
National Phase Deadline
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 three 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, 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 for Luxembourg or ARIPO for Tanzania and Uganda), so you can still get protection through the regional patent up to 30 months (ARIPO) or 31 months (EPO) without having to file nationally or Chapter II at 19 months.
Denmark (time limit for entry into the national phase): In addition to the three countries above, there is a special exception applying only to part of Danish territory with respect to national phase in Denmark. The Danish Patent and Trademark Office has notified the International Bureau that, with regard to entry into the national phase in Denmark, special time limits apply to the Faroe Islands and Greenland. For these areas the time limit is 20 months from the priority date (or from the international filing date where there is no priority claim). The Danish Patent and Trademark Office has notified the International Bureau that the time limit for entry into the national phase, where a demand for international preliminary examination has been filed before the expiration of 19 months from the priority date, is 30 months for Greenland, however, in the case of the Faroe Islands it is 20 months. For the rest of the Danish territory the time limit is 31 months from the priority date, with the possibility of extending that time limit by two months. For further information, please contact the Danish Patent and Trademark Office or see their special page on this situation.
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
Article 52(2)(c) of the European Patent Convention excepts business methods from patentability:
Article 52: Patentable inventions
(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
...
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
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. The follwing is from the EPO's PCT applicant's guide, "How to get an EPO Patent":
[130] The EPO has limited its competence as ISA under certain conditions. The EPO will not carry out an international search in respect of any international application filed by a national or resident of the United States of America with the United States Patent and Trademark Office (USPTO) as receiving Office where such application contains one or more claims relating to the field of business methods as defined in the Notice from the President of the EPO dated 26 November 2001. Moreover, where the IB has acted as receiving Office (see point 129) in respect of such application, the EPO is not competent as ISA if the international application could have been filed with the USPTO as receiving Office, unless the application could also have been filed with the EPO as receiving Office.
[166] Attention is drawn to the field of business methods (see point 130). The EPO as ISA will not carry out an international search on an application to the extent that its subject-matter relates to no more than a method of doing business, in the absence of any apparent technical character. If the claimed subject matter however involves technical means an ISR will be established. To the extent that the technical means involved were widely available to everyone at the filing date and no documentary evidence is considered required, because of their notoriety, no document will be cited in the search report.
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 classes which constitute Business Methods in the EPO, see the EPO's announcement on their website.
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