Patent Cooperation Treaty (PCT)
Treaty (PCT) was born in the 1970s. It is a special agreement open to members of the Paris Convention. Uniform procedure for filing a patent: File a PCT international application within 12 months of filing the national application, designate the country where protection is to be obtained, and claim priority under the Paris Convention.
Let’s first review the obvious advantages of the PCT. Examples are as follows:
1. Simplify the application procedures
Only need to submit an international application By applying for a patent, you can apply for a patent in multiple countries without having to file a separate patent application in each country.
2. Postponing the decision-making time
Through the PCT, a patent applicant can go through the procedures for entering an international patent application into each country within twenty months after first submitting a patent application; if If an international preliminary examination is requested, the procedures for entering an international patent application into each country can also be processed within thirty months from the date of first filing of the patent application.
3. Improve application efficiency
Applying for a patent through the PCT can obtain a high-quality international preliminary examination or international search report, which can help the applicant determine whether the patent has good prospects. , is expected to become a "strong" patent, thereby helping applicants determine whether to enter the national phase.
4. Reduce the burden on national offices of member states
In some countries, the national fees for international patent applications are lower than for ordinary applications.
Since joining the PCT in 1994, the number of patent applications submitted by Chinese applicants through the PCT channel has increased year by year, and many issues related to PCT applications have also followed. Today, the author will talk to you in detail about when the PCT application can be modified?
According to the PCT regulations, the application documents can be modified in the international phase and the national phase. Let us introduce them respectively.
1
International phase
First opportunity for amendment
The following is the original text of the Patent Cooperation Treaty:
Article 19 Propose amendments to the claims to the International Bureau
(1) After receiving the international search report, the applicant is entitled to an opportunity to amend the claims of the international application within the prescribed period. Propose amendments to the document to the International Bureau. The applicant may submit a brief statement at the same time in accordance with the provisions of the Rules, explaining the above modifications and pointing out their possible impact on the description and drawings.
(2) Amendments should not exceed the scope of the invention disclosed when the international application was filed.
Article 26 Opportunity to rectify before a designated Office
The scope and procedure for allowing rectification of a national application in accordance with national law by any designated Office in cases of want of use or similar circumstances , the international application shall not be rejected on the ground that it does not comply with the requirements of this Treaty and the Regulations before the applicant has been given an opportunity to correct the international application.
Tip: Before conducting an international search, the applicant does not have the right to amend the international application except for correcting obvious errors; when the International Search Report (ISR) is transmitted to the International Bureau and the applicant, Months or 16 months from the priority date (whichever is the last expiration date) the applicant may amend the claims in accordance with the above Article 19 (the description and drawings cannot be amended).
The revised application documents must be submitted to the International Bureau together with a statement of modification (including a description of the content and basis of the modification). After receiving the revised materials, if the International Bureau feels that the revised statement is not sufficiently expressed, it will further issue a notice of correction.
Second opportunity for revision
The following is the original text of the Patent Cooperation Treaty:
Article 34 Procedures of the International Preliminary Examining Authority
( 2)(b) Before the international preliminary examination report is issued, the applicant has the right to amend the claims, description and drawings in the prescribed manner and within the prescribed period. Such modifications shall not exceed the scope of the invention disclosed at the time the international application is filed.
Since the modification period is before the international preliminary report is issued, it provides the applicant with a relatively generous time for modification, and multiple modifications can also be made.
Modifications need to be submitted by letter and accompanied by a modified replacement page. At the same time, the relationship between the replaced page and the replacement page must be explained (except for modifications that delete the entire page content). If the applicant introduces a scope beyond what was disclosed when the PCT application was submitted during the amendment process, the amendment will be deemed invalid.
2
National stage
Here we have to distinguish between two terms: designated offices and selected offices.
Designated Office: The country or intergovernmental organization in which the applicant specifies in the international application the Contracting State that requires that country to grant protection to the invention
Elected Office: The applicant specifies in the international preliminary examination The Member State or intergovernmental organization specified in the request that intends to use the results of the international preliminary examination.
I still don’t understand it just by looking at the concept. Next, the author will explain it in detail.
Since patents are applied for through the PCT route, the procedure for granting patent rights is still carried out by the patent offices of each member state after the application enters the national phase. Protection is possible only in those countries specified by the applicant on the application form, and the national Office of the designated country becomes the designated Office.
Taking into account the differences in the requirements for granting patents in national patent laws, patents in some countries do not require substantive examination. Therefore, Chapter 2 of the Patent Cooperation Treaty - International Preliminary Examination Procedure is optional and is only effective for those countries that conduct substantive examination of the patent; if the applicant chooses the international preliminary examination procedure, he or she needs to The request for examination indicates which countries or international organizations are scheduled to use the results of the international preliminary examination. These contracting countries or international organizations are called selected countries, and the national offices of the selected countries are the selected offices.
In other words, the selected offices are those countries that conduct substantive examination of patent rights among the countries designated by the applicant. Take China as an example. China's Patent Law stipulates the substantive examination of invention patent applications, which applies to Chapter 2 of the Patent Cooperation Treaty mentioned above. For international applications designated by China under the PCT, the State Intellectual Property Office is both the designated office and the elected office. You understand Have you done it yet?
Now that we have understood the concepts of designated offices and elected offices, let’s take a closer look at the provisions for modification of PCT patents after they enter the national phase.
After entering the national phase, you can first make amendments in accordance with Articles 28 and 41 of the PCT Treaty:
Article 28 submits to the designated Office a review of the claims, description and drawings. Amendment
(1) The applicant shall have the opportunity to submit amendments to the claims, description and drawings to each designated Office within the prescribed time limit. Except with the express consent of the applicant, no designated Office shall grant a patent or refuse to grant a patent before the expiration of this period.
(2) The amendment shall not exceed the scope of the invention disclosed when the international application is filed, unless the domestic law of the designated country allows the amendment to go beyond this scope.
(3) In all aspects not provided for in this Treaty and the Regulations, modifications shall comply with the domestic law of the designated country.
(4) If the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.
Article 41 is consistent with Article 28 in terms of stipulated content, except that the object has been changed from "designated office" to "selected office". I will not go into details here.
After entering the national phase, the applicant needs to go through the national phase procedures within the specified period. Taking China as an example, entry procedures need to be completed within 30 months from the date of priority (if there is no priority, the date of international application). Also note that many countries have language requirements for application documents to enter the national phase. Taking China as an example again, if the international application is not in Chinese, a Chinese translation needs to be submitted.