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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
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)
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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