Patenting under PCT.pptx m pharm subject RMIPR

Patenting under pct, steps involved in it

1. Patenting under PCT By : G Krishna sri 24T21S0105 M pharm 1 st year Department of pharmacology CMR college of pharmacy Subject : Research Methodology And IPR

2. Definition : The Patent Cooperation Treaty (PCT) is  an international agreement that allows inventors to seek patent protection for their inventions in multiple countries (or) it is an international patent law treaty that provides a unified procedure for filing patent application to protect inventions in each of its contracting states.   It is an special international treaty organized by WIPO that only provides access to member states of Paris Convention for the Protection of Industrial Property

3. Purposes : Procedures for obtaining legal protection for the inventions Dissemination of technical information Single application for multiple countries Reduced costs and complexity Delayed national phase entry

4. Process : Filing: with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and one set of fees. International Search : an "International Searching Authority" (ISA) identifies the published patent documents and technical literature ("prior art") and establishes a written opinion on invention's potential patentability. International Publication : as soon as possible after the expiration of 18 months from the earliest filing date, the content of international application is published. Supplementary International Search (optional): a second ISA identifies, at applicant's request, published documents which may not have been found by the first ISA which carried out the main search. International Preliminary Examination (optional): one of the ISAs, at applicant's request, carries out an additional patentability analysis. National Phase : after the end of the PCT procedure, usually at 30 months from the earliest priority date, applicant starts to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which the applicant wants to obtain them.

5. Terminology: Receiving Office (RO) - office in which the International Application must be filed. For our purposes, the USPTO will be the RO, but in some circumstances the International Bureau (IB) will also act as the RO for U.S. residents and nationals. International Searching Authority (ISA)- responsible for the patent search and initial written opinion. In the Request form you can select U.S., AU, Korea, EPO, etc. as the ISA. Note the EPO has limitations as to subject matter that will be searched. The ISA is normally responsible for the International Search Report and Written Opinion, but the IPEA (see below) has the discretion to issue its own written opinion. International Bureau (IB )- maintains the master file of all international applications and acts as publisher as well as central coordinating body. The World Intellectual Property Organization in Geneva, Switzerland performs the duty of the IB.

6. International Preliminary Examining Authority (IPEA )- The IPEA establishes the International Preliminary Examination Report (IPER) which presents the examiner's final position as to whether the claim is novel, involves an inventive step, and is industrially applicable. The ISA normally creates the initial written opinion, but the IPEA has the discretion to issue its own written opinion. Designated Office (DO)- is the national patent office acting for the state or region designated under Chapter I. Generally, it is where you can nationalize the application under Chapter I. Elected Office (EO ) - is the national patent office acting for the state or region elected under Chapter II. Generally, it is where you can nationalize the application under Chapter II. Chapter 1-Examination without interaction between applicant and examiner, Automatic, Default, Examination Result = International Preliminary Report on Patentability (IPRP ) Chapter II – Examination with interaction (argument) between applicant and examiner, Requires Filing of a Demand + Fee Examination Result= International Preliminary Examination Report ( IPER )

7. International Search Report (ISR)- consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step (non-obviousness ) Written Opinion (WO)- is a preliminary and non-binding opinion by the ISA on whether the invention appears to meet the patentability criteria in light of the search report results. The WO is sent together with the ISR to the Applicant’s representative .

8. International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an International Preliminary Examination Report (IPER) has not been or will not be established. International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable

9. Fees : Filing fee: The fee for filing the PCT application, which is currently around $1,000-$ 2,000. Search fee: The fee for the international search, which is currently around $1,000-$ 2,000. Examination fee: The fee for examination of the application, which varies by country. National phase fees: The fees for entering the national phase in each country, which vary by country.

10. PCT Patent Protection A PCT patent application provides patent protection in the countries where the applicant has entered the national phase. The patent protection is typically valid for 20 years from the filing date of the PCT application.