presentation

The EPO as a PCT Authority : The EPO as a PCT Authority Victoria Robinson Examiner, EPO 13 May 2009

Contents : 11/05/2009 2/22 Contents Introduction/overview of the PCT procedure? International search Publication International preliminary examination Specific situations (epo practice)??? unity amendments Effects in the national phase

Introduction to the PCT : 11/05/2009 3/22 Introduction to the PCT PCT = Patent Co-operation Treaty A common procedure for: Filing Search Examination Does not cover: Grant Refusal Opposition ? ? There is no such thing as an "international patent"

Introduction to the PCT : 11/05/2009 4/22 Introduction to the PCT Traditional patent systems: A local patent application as a first filing Establishes a right to priority under the Paris Convention followed within 12 months by Multiple applications filed in each country Different filing requirements, different languages, multiple searches, first filing 0 12 months end of priority year multiple applications in different countries

Overview of the PCT procedure : 11/05/2009 5/22 Overview of the PCT procedure Local first filing to secure priority right first filing 0 national phases 30

Overview of the PCT procedure : 11/05/2009 6/22 Overview of the PCT procedure Within 12 months, file a PCT application Priority claimed from first filing Receiving Office (RO) first filing 0 national phases 30 12 PCT filing

Overview of the PCT procedure : 11/05/2009 7/22 Overview of the PCT procedure -> International Search Authority (ISA) International search report Written Opinion of the International Search Authority Typically issued around 16 months from priority date. first filing 0 national phases 30 12 PCT filing 16 ISR and WO/ISA

Overview of the PCT procedure : 11/05/2009 8/22 Overview of the PCT procedure Publication of the application 18 months from priority date Publication number WO YYYY/nnnnnn With the search report if available first filing 0 national phases 30 12 PCT filing 16 ISR and WO/ISA 18 publication

Overview of the PCT procedure : 11/05/2009 9/22 Overview of the PCT procedure Optional examination phase International Preliminary Examination Authority (IPEA) "Demand" = request for examination within 22 months first filing 0 national phases 30 12 PCT filing 16 ISR and WO/ISA 18 publication 22 (optional) demand for examination

Overview of the PCT procedure : 11/05/2009 10/22 Overview of the PCT procedure Issue of report on patentability After 28 months If demand is filed -> IPER If no demand -> IPRP first filing 0 12 PCT filing 18 publication 16 ISR and WO/ISA 22 (optional) demand for examination 28 IPER or IPRP national phases 30

Receiving Office (RO) : 11/05/2009 11/22 Receiving Office (RO) The applicant files his application at a Receiving Office (RO) Use the request form PCT/RO/101...

Choice of ISA : 11/05/2009 12/22 Choice of ISA There are currently 13 International Search Authorities The receiving office specifies which ISAs are competent for applications received by it. The applicant can indicate his choice of ISA if there are multiple competent ISAs.

EPO as ISA : 11/05/2009 13/22 EPO as ISA The EPO acts as ISA for more than 100 different receiving offices share?

The tasks of the ISA : 11/05/2009 14/22 The tasks of the ISA The International Search Authority performs a search of the prior art. The ISA generates: International Search Report (ISR) and Written Opinion of the International Search Authority (WO/ISA) The time limit for completion is stated in Rule 42 PCT 3 months after date of receipt of search copy or 9 months after international filing date/priority date whichever expires later

Prior Art : 11/05/2009 15/22 Prior Art Article 15(2) PCT: "The objective of the international search is to discover relevant prior art." Prior art as defined by the PCT (Article 33): written disclosures (including drawings and illustrations), made available to the public before the filing/priority date Not "prior art" in the meaning of the PCT: oral disclosure, public use, exhibition patents filed before but published after the filing/priority date ("prior rights). Hence there is no obligation to search for oral disclosures or prior rights, but if they are found, they will be included in the search report.

Minimum Documentation : 11/05/2009 16/22 Minimum Documentation Article 15(4) PCT: "The International Searching Authority ... shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations. " All ISAs must search at least the "Minimum PCT Documentation" Additionally, ISAs are obliged to search additional documentation at its disposal.

PCT Minimum Documentation (Rule 34) : 11/05/2009 17/22 PCT Minimum Documentation (Rule 34) Minimum Documentation Rule 34 PCT PCT applications regional applications (EP) Germany, France, UK, Switzerland, USA Literature: approx 135 journals Patents and applications from 1920 in Spanish Japanese Korean Russian Patents and applications from 1920 in English, French, German ** *, ** * * Where no priority is claimed and the documents are made available ** For offices having a corresponding official language, otherwise only where abstracts in English are available

International Search Report : 11/05/2009 18/22 International Search Report The front page

International Search Report : 11/05/2009 19/22 International Search Report The international application number

International Search Report : 11/05/2009 20/22 International Search Report Classification of the subject-matter according to the IPC

International Search Report : 11/05/2009 21/22 International Search Report Indication of fields (IPC classes) searched and databases used

International Search Report : 11/05/2009 22/22 International Search Report Citation of documents found Indication of most relevant passages

International Search Report : 11/05/2009 23/22 International Search Report Categories of cited documents Definitions of the categories

International Search Report : 11/05/2009 24/22 International Search Report Categories of cited documents Definitions of the categories

Categories of Cited Documents : 11/05/2009 25/22 Categories of Cited Documents X: Document relevant on its own Often relevant to novelty Can also be cited for inventive step Y: Document relevant in combination with another document Relevant for inventive step Always paired with another 'Y' document A: General state of the art, not prejudicial to patentability P: Document was published in the priority period Combined with a second category, e.g. PX E: Earlier applications not published until after the filing date e.g. National prior rights Other categories, L, T, O are more seldom used.

International Search Report : 11/05/2009 26/22 International Search Report Indication of which claims the document is relevant to

International Search Report : 11/05/2009 27/22 International Search Report Date of completion of the search report Date of posting of the search report Name and address of ISA Name of examiner

Written Opinion of the ISA : 11/05/2009 28/22 Written Opinion of the ISA At the same time as the search report Opinion of the examiner who carried out the search Novelty Inventive step Industrial applicability Optionally may contain Clarity Formal issues (two part form, reference signs...) Other issues covered Incomplete search Unity Particular documents