Brown & Michaels
New Developments in the PCT
The Patent Cooperation Treaty (PCT) has now been signed by 152 countries and four regional patent systems. The latest to sign are:
- Jordan - effective 9 June 2017
- Cambodia - effective 8 December 2016
- Djibouti - effective 23 September 2016
- Kuwait - effective 9 September 2016
A complete list of PCT countries is available on this website.
See below for information on International Search Authorities (ISA) / International Preliminary Examination Authorities (IPEA) for US filers.
- Jordan: On 9 June 2017, Jordan will become bound by the PCT and consequently any international application filed on or after 9 June 2017 will automatically include the designation of Jordan. Also, because Jordan will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 9 June 2017. Furthermore, nationals and residents of Jordan will be entitled, as from 9 June 2017, to file international applications under the PCT. The code for Jordan is JO.
- Cambodia: On 8 September 2016, Cambodia became the 151st Contracting State of the PCT, and on 8 December 2016, will become bound by the PCT. Consequently, any international application filed on or after 8 December 2016 will automatically include the designation of Cambodia. Furthermore, nationals and residents of Cambodia will be entitled, as from 8 December 2016, to file international applications under the PCT. The code for Cambodia is "KH".
- Djibouti has joined the PCT, becoming the 150th Contract State to do so. Any international application filed on or after September 23, 2016, will include the designation of Djibouti, and citizens of Djibouti will be entitled to file internationally under the PCT from that date. The code for Djibouti is "DJ".
- Kuwait has joined the PCT, for applications on or after September 9, 2016. The code for Kuwait is "KW".
- Singapore IP Office (IPOS) is available as an International Search Authority for US filers as of April 1, 2016.
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 donnees bulletin europeen des brevetes
- Institut of Commerce for Industry, Trade,Commerce/Wirtschaftsinstitut fur 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 - WIPD uses a logo which is very similar to the legitimate WIPO logo and has a website which looks a lot like WIPO's)
- IP Data - Register of International Patents - new as of November 2013
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
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. 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).
Luxembourg, Tanzania, Uganda are not subject to the automatic 30-month rule, and a Chapter II demand is necessary to get the 30-(or 31-)month period for national patents in these countries. 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.
International Search Authority (ISA) / International Preliminary Examining Authority (IPEA)
for US PCT Filers
Australia - European Patent Office - Israel - Japan - Korea - Russia - Singapore
ISA/AU has been available as an International Searching Agency for US PCT applications since November 1, 2008. As of September 24, 2014, IP Australia will accept applications in any area of technology, but no more than 250 applications from the USA in any calendar quarter.
European Patent Office - EPO
The European Patent Office (EPO), in its capacity as International Searching Authority (ISA), has notified the International Bureau (IB) that, with effect from 1 January 2015, it will withdraw its limitation of competence regarding international applications containing business methods filed by nationals and/or residents of the United States of America with the United States Patent and Trademark Office (USPTO) or the IB as receiving Office. This will concern all such applications that are filed on or after that date.
It is important to note that business methods, as such, continue not to be patentable under the European Patent Convention, and that the Notice from the EPO dated 1 October 2007 concerning business methods remains applicable (see the Official Journal of the EPO No. 11/2007, page 592 at: http://archive.epo.org/epo/pubs/oj007/11_07/11_5927.pdf). The ISA/EP will therefore continue to issue a declaration under PCT Article 17(2)(a) that no ISR will be established whenever an application relates only to a business method.
However, this change means that, in all cases where the subject matter of the application relates to business methods but involves technical means, ISA/EP will provide a search report for those parts of it which are more than mere business methods regardless of an applicant's nationality or place of residence, and irrespective of whether the EP or the PCT route is chosen.
This is the last limitation to be withdrawn by ISA/EP; as a result, as from 1 January 2015, international applications in all fields of technology will be considered by ISA/EP.
A link to further information, entitled "No more limitations to PCT work" is available on the EPO website at: http://www.epo.org/applying/international.html
Israel Patent Office - ILPO
The Israel Patent Office (ILPO) became a competent International Searching and Preliminary Examining Authority for US filers on 1 October 2014. Note, however, that the ILPO has notified the International Bureau that it will only accept a maximum of 100 international applications per fiscal quarter (increased from 75 in April 2016). Applications using ILPO as ISA must be filed through the USPTO (RO/US) and not through the International Bureau (RO/IB).
Japan Patent Office - JPO
Effective 1 July 2015, the Japan Patent Office (JPO) may act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications filed with the United States Patent and Trademark Office (USPTO) as a Receiving Office (RO/US). The dollar amount of the search fee required by the JPO when acting as an ISA will be $577.
The following restrictions apply: (1) the applications are submitted in the English language; (2) the claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes; (3) the JPO has not received more than 5,000 international applications from the USPTO during the 3 year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications. The JPO will also act as an IPEA if these four requirements are met, and the JPO acted as the ISA.
Korean IP Office (KIPO)
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)
Russian Patent Office (Rospatent)
Rospatent is the least expensive ISA/IPEA option. It has no restrictions as to technology or application count.
Singapore IP Office (IPOS)
Singapore IP Office (IPOS) is available as an International Search Agency as of April 1, 2016. It will not search applications in the fields of:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
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