Patents international treaties

Many of the most significant patenting regions (e.g. Japan, the USA and Europe) are also signatories of the International Patent Cooperation Treaty (PCT). This allows for an initial review of the patent application to be undertaken by a single patent office. The office then provides a summary assessment of this application, which provides an indication of the likely response that would be obtained from individual PCT countries. For many, this initial assessment plays a major role in deciding whether to proceed with the patent application in individual countries. 

The procedure for obtaining a patent is typically started by filing a national patent application in a patent office of a country which is party to the Paris Convention (an international treaty agreeing certain reciprocal patent rights). This application can provide a so-called priority date for the invention disclosed in this priority application such that the patentability of the invention is assessed as of that date. This priority date can given to further patent applications filed in other Paris Convention territories provided that these further patent applications are filed within 12 months of the first priority application. A patent application must be filed before any public disclosure of the invention since, in most territories, public disclosures before the priority date can be used to attack the novelty and non-obviousness of an invention described in a patent application. 

A patent has a limited territorial effect and so it is desirable to seek patent protection in those territories where any product is to be made or sold and any process used. Various international treaties and conventions exist which facilitate the acquisition of patent protection in many countries (see below). 

One important tool in the international patent world is the Patent Cooperation Treaty (PCT). By filing an international patent application, one may seek patent protection for an invention simultaneously in each of a large number of countries. Such an application may be filed by anyone who is a national or resident of a contracting state of the PCT. A list of the more than 120 contracting states can be found on the website of the World Intellectual Property Organization (WIPO) [5]. The effect of the international application in each such state is the same as if a... 

Van Wijk, R.J. De Weijer, A.P. Klarenberg, D.A. De Jonge, R. 8c Jongerden, G.J. Technique for Measuring Properties of Polymeric fibres World Intellectual Property Organization Patent Cooperation Treaty International Application WO 99/12019 Assigned to Akzo Nobel N.V. Piled in 1998. Priority Number NL 1006895 (1997). 

Kittrell, C. 8c Feld, M.S. Catheter System for Imaging World Intellectual Property Organization Patent Cooperation Treaty International Application WO 89/02718 Assigned to Massachusetts Institute of Technology Filed in 1988. Priority Number US 100714 (1987). 

The Schering U.S. priority application dated September 18, 1992 formed the basis for an international Patent Convention Treaty (PCT) application, covering Europe, which was filed eight months later.6(b)... 

An international application, or patent corporation treaty (PCT), which leads to parallel national patents in the countries of choice. Most countries are parties to the PCT. 

After submission to a patent office, the file is examined for some basic formal requirements and, if adequate, is given a filing date. A first indication about the chances of a patent application may be obtained from a search report which is issued by the European Patent Office and also for international patent applications under the Patent Cooperation Treaty (see below). In most cases, the search report will list a number of earlier patents or publications and indicate whether these interfere with the proposed claims of the examined file. As a consequence of the search report the applicant can amend the proposed claims before the examination is initiated. 

The prosecution procedure of official action and responses may be repeated in all of the individual countries where a patent application was filed. Fortunately, international patent cooperation treaties exist to shorten and simplify this awkward process for both sides. 

The International Patent Cooperation Treaty (PCT) created the opportunity to file a patent application almost world-wide (most countries accept PCT applications) at international patent registration offices which are usually identical with the national patent offices. A search report summarizing relevant prior art will be issued and, if requested, a preliminary examination considering the prior art is performed. The preliminary international examination provides a non-binding opinion whether the claimed invention appears to be novel, inventive and industrially applicable. It does not investigate the patentability according to any national law. 

Apart from applications to national authorities, patent applications may also be made through the European Patent Office (EPO) and the International Bureau of the World Intellectual Property Organisation (WIPO) under the Patent Cooperation Treaty (PCT). 

As noted above, patent protection is obtained on a country-by-country basis, and therefore patent applications must be filed in each country where protection is desired. International treaties and regional conventions have been set up to coordinate and make obtaining worldwide protection convenient and efficient. Several important treaties have been developed and are administered by the international organization known as the World Intellectual Property Organization (WIPO), centered in Geneva, Switzerland. 

Keefer, B.G. and Doman, D.G. WIPO International Publication No. W097/39821. World International Property Organization pubhshed under the Patent Corporation Treaty (PCT), 1997. 

Although patents are territorial, that is, they are granted by and enforced in individual countries, several international treaties have had a major impact on patent practice on a global scale. Although the lists of signatory countries are not identical for all treaties, essentially all major countries are signatories to all the treaties described herein (with the exception of the EPC). 

Anyone applying for a patent at the national or international level is required to determine whether their creation is new or is already owned or claimed. To determine this, huge amounts of information must be searched. The U.S. Patent and Trademark Office (USPTO) and the World Intellectual Property Organization s (WIPO) International Patent Cooperation Treaty (PCT) have created classification systems which organize information concerning inventions into indexed, manageable categories for easy retrieval. 

Having determined where to file, one faces the task of filing patent applications in the appropriate countries. International agreements have made this process much easier. Although it is possible to file separate patent applications in each of the countries selected, this procedure is rarely used. Rather, the procedures of various international intellectual property treaties can be used to simplify this administrative task considerably. The principal international treaty governing patents is the Paris Convention for the Protection of Industrial Property (229), which has approximately 162 signatory member nations. A patent application filed in any member nation creates a priority date for applications filed within 12 months (i.e., the conventionyear) in other convention nations. Thus, an applicant... 

Articles 31 to 42 PCT provide for an international preliminary examination to be performed during the international phase (Chapter II of the Patent Cooperation Treaty). Countries having acceded to the Patent Cooperation Treaty can make a declaration that they will not be bound by Chapter 11 of the Patent Cooperation Treaty. An applicant resident in a country which is bound by Chapter II of the Patent Cooperation Treaty can make a request for an international preliminary examination to be performed for selected patent offices, known as elected offices . After the issue of the search report (and the international preliminary examination, if applicable and requested) the application passes to the national patent office of each of the designated countries and this is the start of the national phase of the procedure. On request of the applicant, a substantive examination takes place in each of the designated countries, (and the EPO, if designated), under the laws of that country. 

Patents are usually filed first in the inventor s or assignee s home country. US companies, for example, need to get permission from the US PTO in order to do a foreign filing first. It used to be that US patent applications weren t published at all, but that international (PCT, Patent Cooperation Treaty) applications were published 18 months after filing. But in late 2000 the US followed suit, so that now US patent applications appear a year-and-a-half post filing as well, unless the owner of the patent either requests earlier publication (quite unlikely), or requests that it not be published at all and then certifies that a patent won t be sought for the invention in other countries where applications are published. Most of the time, then, applications will appear, and be accessible on the web as described later, at the 18-month timepoint, whether US or not. 

Olkku, J., Peltola, R, Reimkainen, P.,Rasanen, E. Tuokkuii, V.-M. 2000). Method andapparatus for treating kernels, treated cereal kernels and their use. International Patent Cooperation Treaty (PCX) WO 0025595. 

D. L. Delaet, Patent Cooperation Treaty International Publication No. WO 91/19688 (December 26, 1991). 

The Patent Cooperation Treaty (PCT) is an international agreement that extends the time before formally moving forward on fifing the patent by another 18 months. Individuals may request this to gain another 18 months to further refine the final product and decide if the idea merits investment of the final costs of patenting. 

Abbreviations US United States PDO 1,3-propanediol PCT Patent Cooperation Treaty and PCT WO international patent... 

---