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New Developments in the PCT

The Patent Cooperation Treaty (PCT) has now been signed by 142 countries and four regional patent systems. The latest to sign are:

• Thailand - effective as of 24 December 2009
• Peru - effective as of 9 June 2009
• Chile - effective as of 2 June 2009

A complete list of PCT countries is available on this website.

Recent News

• Thailand joined the PCT on 24 September 2009, effective 24 December 2009. 
• Indonesia is now a 31-month country as of 28 May 2009. 
• Reinstatement of PCT Applications abandoned for failure to enter National Stage: PCT Rule 49.6 requires each PCT country to allow reinstatement of a PCT application which does not enter the National Stage within the normal 30 month period (or the longer period noted by code Nxx on our PCT Countries List). Under this rule, if you miss the deadline, you can petition the national patent office to reinstate the application (with a fee, and within a period of time determined by that country's law). Certain countries have not yet changed their law to permit reinstatement according to rule 49.6, and you must enter National Stage in these countries before the deadline, or your application will be irretrievably abandoned.. These countries are flagged with code NR on our PCT Countries list.  The WIPO has posted a page listing these countries - see http://www.wipo.int/pct/en/texts/reservations/res_incomp.html
• San Marino deposited its instrument of accession to the European Patent Convention (EPC) on 21 April 2009, and will become bound by that Convention on 1 July 2009. This will bring the number of Contracting States of the EPC to 36. Therefore, any international application filed on or after 1 July 2009 will include the designation of San Marino for a European patent in addition to a national patent (applicants should be aware that, although any international application filed before that date will include the designation of San Marino for a national patent, it will not include the designation of San Marino for a European Patent).
• European Patent Office Fees: The EPO has changed some of its fee structure, effective 1 April 2009. The additional fee for each page in excess of 35 will be 12 Euros. Instead of paying a separate designation fee for each EPO Contracting State, there is now a flat 500 Euro Designation Fee. Excess Claims Fees are increased as follows: 200 Euro per claim for the 16-50 claims, then 500 Euro per claim for the 51st and each subsequent claim.
• Extension of European Patent to Montenegro: On 16 February 2009 the European Patent Organization and the Government of Montenegro signed an agreement on the extension of European Patents to Montenegro. The date of entry into force of the Agreement has not yet been determined, and will be notified later in the year. Once the Agreement enters into force, it will be possible, in respect of international applications filed on or after a date which is yet to be determined, to extend the protection conferred by European patent applications and patents to Montenegro.
• Peru and Chile have joined the PCT effective June 9 and June 2, 2009, respectively. International applications filed after that date may enter national stage in Chile. 
• Denmark (time limit for entry into the national phase): 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.

• Supplemental Search: Beginning on January 1, 2009, PCT applicants will be able to request a "Supplemental Search". The Supplemental Search is intended to give an applicant an additional search, performed by another patent office other than the one doing the International Search Report. Initially, three offices will be offering the service: the Russian patent office, the Swedish patent office, and the Nordic Patent Institute. The Supplemental Search must be requested (with the fee) before nineteen months from the priority date, and will only cover one invention. For more information, download a PowerPoint show about the program from the WIPO website.  

• Macedonia (officially, the "Former Yugoslav Republic of Macedonia" - country code MK) will become eligible for designation in a European Patent Office patent as of January 1, 2009. For applications filed before that date, European Patents can be extended to Macedonia. For applications filed after January 1, 2009, Macedonia may be designated in an EPO patent to the same extent as other European countries. 

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  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

 Concerning a business method claim, the invention should be claimed in the form of being combined with technical means such as computer hardware and software. If not combined, there is a possibility that it can be regarded as a mere presentation of information in the above.

(received from IP Korea Center Inc., - Nov. 17, 2009)

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.

Examples of the invitations from these sources are available on the PCT website at: www.wipo.int/pct/en/warning/pct_warning.htm

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

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

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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