NOV.

2018

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 General overview of PCT

Development of PCT in China

Outline of PCT procedure

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  PCT－Patent Cooperation Treaty

in 2018
Total Contracting Parties : 152
• Done at Washington on
100+ receiving offices
June 19, 1970
22 ISAs/IPEAs
•Started in June 1978
243,500 applications(2017)
18 contracting states USA 56,624 CN48,882 JP48,208
459 applications Germany18,982
Korea15,763

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Overview of the PCT System

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In what situation, the applicants usually choose
to request for IPER?
If you are the applicant who requesting for the
IPER, will you make amendment?

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  Comparison of traditional patent system and PCT system
◦ Traditional patent system（through Paris Convention）
0 12
File applications to
various countries
File local application

 PCT system
national phase
0 12 16 18 22 28 30

File local application

File one PCT application

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  Traditional patent system
0 12 File applications to
various countries

File local application

• Local patent application followed within 12 months by

multiple foreign applications claiming priority under Paris
Convention:
– multiple formality requirements
– translations and national fees required at 12 months

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  PCT System
0 12 16 18 22 28 30

File local application

File one PCT application

• Local application followed within 12 months by the PCT,

claiming priority under the Paris convention
– one set of formality requirements
– translations and national fees required at 20 or 30 months,
only if applicant wants to proceed with national phase entry

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Advantages of
PCT System

Amend
application

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 Other aspects of PCT system
◦ A special agreement under the Paris convention
◦ A “filling” system, not a patent “granting” system
◦ Only protects patent applications for invention & utility
model
◦ NOT protect industrial design and trademark
◦ Administrated under WIPO

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 Main offices and organizations of PCT:
◦ Receiving Office (RO):filing date, formality examin,priority,fee, Transmit
the record copy and the search copy
◦ International Searching Authority (ISA)
AT, AU, BR, CA, CN, EP, ES, FI, JP, KR, RU, SE, US, NPI,IN…..
◦ International Preliminary Examination Authority (IPEA)
◦ International Bureau (IB)
◦ Designated Office (DO) the States in which or for which the applicant
wishes to obtain a patent by filing an international application.
◦ Elected Office (EO) Where a demand for international preliminary
examination is filed, the term “elected Office” is used - instead of the term
“designated Office” - to denote the Office of or acting for a State in which
the applicant intends to use the results of the international preliminary
examination. Since only designated States can be elected, all elected
Offices are necessarily also designated Offices.

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 Joined PCT in Jan. 1 1994
 As an ISA/IPEA since Jan. 1 1994
 Designated as an ISA/IPEA by 7 foreign countries
 Number of PCT filing with CNIPA ranked at 2nd
 , 2017
 Electronically processed PCT application by PCT-
SAFE since 2007

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Mitsubishi Ericsson of
Qualcomm Sweden

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PCT-SAFE (Secure Applications Filed Electronically)
 Fully electronic filing in 2004 for all PCT applications
 PCT-EASY filings became part of PCT-SAFE in 2004
 CNIPA began to receive fully electronic filings since
2007

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PCT-SAFE (Secure Applications Filed Electronically)

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PCT-SAFE: fee reductions
 “PCT-EASY” type of filing (on paper + request and
abstract on physical medium)
CHF 100 (EUR 64 or equivalent amount)
 Fully electronic type of filing with application body in
image format (for example PDF, TIFF attachments) and
only the request in character coded format (XML)
CHF 200 (EUR 128 or equivalent amount)
 Fully electronic type of filing with application body and
request in character coded format (XML)
CHF 300 (EUR 191 or equivalent amount)

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Accepted file formats
 Image format: pdf, jpeg, tiff
 Character coded format: xml
 For the formats accepted by a particular receiving
Office, see www.wipo.int/pct-
safe/en/support/notifications/efiling/efiling.pdf
 If accepted by the receiving Office, applicants are
encouraged to attach their pre-conversion files
(documents used to create the image/xml
documents)

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  Two phases of PCT system
◦ International phase
◦ National phase
 Examination and granting of patent independently

International
publication
0 12 16 18 22 28 30
National
International Phase
File local application ISR and (optional) (optional) Phase
PCT application written opinion international IPER
preliminary examination

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 International phase
International
national phase
publication
0 12 16 18 22 28 30

File local (optional)

application ISR and (optional)
international
written opinion IPER
File one PCT preliminary examination
application

Step 1: filing
Step 2: Main procedure of Receiving Office
Step 3: International Search & written opinion of ISA
Step 4: International publication
Step 5: International Preliminary Examination (Optional)

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 International phase
◦ Step 1: filing
◦ Step 2: Main procedure of Receiving Office

0 12 16 18 22 28 30

PCT application

File pct application with CNIPA

In Chinese or English and pay the fees

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 International phase
 Step 1: filing (1)
◦ Applicant
 Natural person or legal entity
 Several applicants, at least one of the applicants is a resident or
national that competent
 Several applicants can designate separately

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Step 1: filing (2)
 Where to file
 the regional patent office or the International Bureau
(IB)
 Language
 language accepted by the international searching
authority;or
 a language of publication; or
 a language accepted by the receiving office
CNIPA as RO, accepts Chinese or English applications

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 International phase:
◦ Step 1: filing (3)
 4 ways to submit applications

By post By fax By personal delivery By SAFE

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International phase:
 Step 1: filing (4)
◦ PCT Application requires,
 Request
 Description
 One or more claims
 Abstract (may be filed later)
 Drawings (where applicable)
 Sequence listing (where applicable)

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 International phase:
◦ Step 1: filing (5)
 Designation and types of PCT protection
 automatic designation of all Member states (2004)
 types of pct protection: Invention and Utility Model

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 International phase:
◦ Step 1: filing (6)
 Priority
 Priority claim (PCT Regulations 4.10)
 Priority documents (PCT Regulations 17.1)

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International phase:
 Step 2: Main procedure before Receiving Office (RO)
◦ Receive an international application
◦ Confirm an international filing date (the receiving date)
◦ Examine the international application as to forms and fees
◦ Transmit the record copy and the search copy

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 International phase
◦ Step 3: International Search & procedure of ISA

national phase
0 12 16 18 22 28 30

ISR and
written opinion

Received international Search report and

written Opinion by the ISA

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International phase:
 Step 3: International Search
◦ The aim: to discover relevant prior art and make written opinion
concerns patentability
◦ Establish an International Search Report (ISR) & written opinion
◦ Time limit: within 3 months from the receipt of the search copy or
9 months from the priority date, whichever expires later
◦ Transmit ISR to IB and the applicant separately

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International phase:
 Step 3: International Search Report
 PCT/ISA/220 : Notification of Transmittal of ISR & the Written
Opinion of the ISA
◦ PCT/ISA/210 : International Search Report, or PCT/ISA/203 :
Declaration of Non-Establishment of ISR
◦ PCT/ISA/237 : The Written Opinion of the ISA

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Eg: PCT/ISA/220:
Notification of Transmittal
of ISR & the Written
Opinion of the ISA

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Eg: PCT/ISA/210:
International Search
Report

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International phase:
 Step 3: International Search & procedure of CNIPA as ISA
◦ CNIPA qualified as ISA
◦ Designated as ISA for KENYA, LIBERIA, TURKEY, GHANA,
ZIMBABWE, INDIA, DPRK

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 International phase
Step 4: International publication

International publication

0 12 16 18 22 28 30

International application be
published in prescribed
language by Wipo

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International phase:
 Step 4: International publication
◦ Time: promptly after 18 months from priority date
◦ Application and ISR
◦ 10 Languages: Chinese, English, French, German, Japanese,
Russian, Spanish, Arabic
 Korean and Portuguese on Jan. 1, 2009
◦ IB is responsible for the international publication of all
international applications
◦ The legal effect of the international publication depends on
the national law of the designated state

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 International phase
◦ Step 5: International Preliminary Examination (Optional)

0 12 16 18 22 28 30

(optional) (optional)
IPER IPER

Applicant may demand for Received IPER and decide

international preliminary whether entry into national
examination phase

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International phase:
 Step 5: International Preliminary Examination (Optional)
◦ Aim: make a preliminary, non-binding opinion on
patentability based on ISR, written opinion, and applicant’s
argument and amendment

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International phase:
 Step 5: International Preliminary Examination (Optional)
◦ Time limit for request
 3 months after the issuance of the international search report and the
written opinion of the ISA, or
 22 months from the priority date, whichever expires later
◦ IPEA completes IPER
 28 months from the priority date, or
 6 months from the start of the examination , whichever expires later

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 International phase:
 Step 5: International Preliminary Report
◦ PCT/IPEA/416 : Notification of Transmittal of IPR on
Patentability
◦ PCT/IPEA/409 : International Preliminary Report on
Patentability

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Eg: PCT/IPEA/416:
Notification of Transmittal
of IPR on Patentability

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Eg: PCT/IPEA/409:
International Preliminary
Report on Patentability

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 National phase
national phase

0 12 16 18 22 28 30

Perform the acts for entry

into national phase

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National phase:
 Basic requirements for entry into the national phase
◦ Time limit (R103)
◦ Payment of fees
◦ Translation

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National phase:
 Formalities of entry into national phase of China (1)
◦ File an request within 30 months from priority date (latest 32
months)
◦ Pay the application fee (additional fee), publication fee and
surcharge fee for late entry if applicable

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Formalities of entry into national phase of China (2)
◦ Chinese statement for entering national phase
◦ Chinese translation of the description and the claims
◦ Chinese translation of the abstract, a copy of drawings and
drawing abstract where there are

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Formalities of entry into national phase of China (3)
◦ indicate in the written statement the title of the invention
◦ indicate the name and address of the applicant
◦ indicate the name of the inventor
◦ submit the certifying documents for changing applicant in the
international phase
All above items shall be in conformity with those recorded with
the International Bureau

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Special national requirements for entering national
phase of China (1)
◦ Statement for the deposit of the biological materials (R108)
◦ Written statement for the invention-creation developed
relying on the use of genetic resources (R109)
◦ Declaration for claiming priority (R110)
◦ Time for the amendments on the applicant’s own initiative
(R112)

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Time for correction of the translation mistakes (R113)
◦ Before the completion of technical preparations for
publication or announcement
◦ Within three months from the date of receipt of the
notification of application entering into substantive ex. Phase

The extent of protection change because of incorrect

translation (R117)

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In the following circumstances, the effect of the
application in China shall cease:
◦ In the international phase, the application has been withdrawn
or was deemed to have been withdrawn, or the designation of
China of the international application has been withdrawn,
but the withdrawal shall have no effect if the processing or
examination has already started.
◦ Failure for entry into the Chinese national phase within 32
months from the priority date
◦ Fail to fulfill the requirements of Rule 104 (1)-(3) at 32
months from the priority date

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National phase:
 Procedure for entering national phase of China
◦ Step 1: Examination of whether international application
effective in China

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National phase:
 Procedure for entering national phase of China
◦ Step 2: Formality examination
 examination of the request
 examination of translation
 examination of priority claims
 examination of special formalities for international application
involving deposit of sample of biological material

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National phase:
 Procedure for entering national phase of China
◦ Step 3: National publication
 Legal effect of national publication
 for the international application which was published in the
language other than Chinese, the right of request for provisional
protection shall be produced after the national publication has been
completed

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National phase:
 Procedure for entering national phase of China
◦ Step 4: Substantive examination
 Request for substantive examination shall be filed within 36 months
from the priority date (the filling day )

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National phase:
 Procedure for entering national phase of China
◦ Step 4: Substantive examination
 Make another search where applicable
 Examination opinion that related to clarity, unity, novelty,
inventive step, industrial applicability etc. shall be given
according to Chinese Patent Law

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National phase:
 Procedure for entering national phase of China
◦ Step 5: Granting or rejection
 Be granted or rejected by CNIPA

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 Two phases of PCT system
◦ International phase
 filing
 Main procedure of Receiving Office
 International Search & written opinion of ISA
 International publication
 International Preliminary Examination
◦ National phase
 Examination and granting of patent

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 If an American who lives in Korea files a PCT
application, can CNIPA be the receiving office?
 Which offices can be the RO to this application?

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 Who may file an international application?
Any resident or national of a Contracting
State may file an international application.
Where there are two or more applicants, at
least one of them must be a national or a
resident of a Contracting State.
 CNIPA can’t be the RO. If the Chinese patent
examiner receive this applicaition, he/she
should mark the filing date and transmit the
documents to IB. USPTO, KIPO and IB could be
RO.

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 Residents or nationals of States which are
party to the PCT and also to the ARIPO Harare
Protocol, to the Eurasian Patent Convention,
to the European Patent Convention, or to the
OAPI Agreement generally also have the
option of filing an international application
with the ARIPO Office, the Eurasian Patent
Office, the European Patent Office, or the
OAPI Office, respectively.

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