German seminar slides General

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THE PATENT COOPERATION TREATY (PCT)

IGNOU, New Delhi, IndiaApril 2005
ANIL SINHA SENIOR PROGRAM OFFICER WIPO Academy
WIPO
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VELCRO
One lovely summer day in 1948, a Swiss
amateur-mountaineer and inventor decided to take
his dog for a nature hike. The man and his
faithful companion both returned home covered
with burrs, the plant seed-sacs that cling to
animal fur in order to travel to fertile new
planting grounds. The man neglected his matted
dog, and with a burning curiosity ran to his
microscope and inspected one of the many burrs
stuck to his pants. He saw all the small hooks
that enabled the seed-bearing burr to cling so
viciously to the tiny loops in the fabric of his
pants. George de Mestral smiled thinking, "I will
design a unique, two-sided fastener, one side
with stiff hooks like the burrs and the other
side with soft loops like the fabric of my pants.
I will call my invention 'velcro' a combination
of the word velour and crochet. It will rival the
zipper in its ability to fasten." Mestral's idea
met with resistance and even laughter, but the
inventor 'stuck' by his invention. Together with
a weaver from a textile plant in France, Mestral
perfected his hook and loop fastener. By trial
and error, he realized that nylon when sewn under
infrared light, formed tough hooks for the burr
side of the fastener. This finished the design,
patented in 1955. The inventor formed Velcro
Industries to manufacture his invention. Mestral
was selling over sixty million yards of Velcro
per year. Today it is a multi-million dollar
industry.
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DO WE HAVE A BRIGHT IDEA?
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DO WE CONSIDER THE IDEA AN INVENTION?

• IS IT A SOLUTION TO A TECHNICAL PROBLEM
• DOES THE SOLUTION INVOLVE
• NOVELY
• INVENTIVE STEP
• INDUSTRIAL APPLICABILITY

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SHOULD WE FILE A PATENT APPLICATION?

• BEFORE PUBLISHING
• THE INVENTION

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DO WE INTEND TO

• FILE PATENT APPLICATIONS
• OUTSIDE HOME COUNTRY
• IN MORE THAN THREE COUNTRIES?
• TO PROTECT EXPORT MARKETS
• TO LICENSE TECHNOLOGY
• TO COLLABORATE WITH A FOREIGN FIRM

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DO WE WISH THAT SEEKING PATENTS ABROAD WERE

• MORE SIMPLE
• MORE CERTAIN
• MORE COST EFFECTIVE
• THAT WE HAD BETTER CONTROL
• THAT WE COULD TAKE MORE INFORMED DECISION

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THEN CONSIDER THE PCT
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PATENT COOPERATION TREATY

• IS A WIPO ADMINISTERED TREATY
• WHOSE AIM IS TO RENDER THE PROCESS OF OBTAINING
  PATENTS IN MULTIPLE COUNTRIES
• SIMPLER AND
• MORE ECONOMICAL

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PATENT COOPERATION TREATY

• 126 MEMBER STATES (including US, EU, Japan,
  China, India, Brazil, South Africa, South Korea
  and growing).
• OVER 120,000 INTERNATIONAL APPLICATIONS RECEIVED
  BY WIPO DURING 2004
• 1,000,000 PCT APPLICATIONS SINCE 1978...

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PATENT COOPERATION TREATY

• ...BY SOME OF WORLDS LEADING COMPANIES
• ...BY SOME OF LEADING COMPANIES AND ORGANIZATIONS
  IN DEVELOPING COUNTRIES

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PATENT COOPERATION TREATY MAJOR USERS WORLDWIDE
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PATENT COOPERATION TREATY MAJOR USERS WORLDWIDE
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PATENT COOPERATION TREATYMAJOR USERS IN
DEVELOPING COUNTRIES

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OVERVIEW OF THE PCT
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PATENT COOPERATION TREATY

• FILE AN INTERNATIONAL APPLICATION WITH THE HOME
  PATENT OFFICE AND OBTAIN AN INTERNATIONAL FILING
  DATE
• INTERNATIONAL FILING DATE REGULAR NATIONAL
  FILING DATE IN EACH OF THE DESIGNATED PCT
  COUNTRIES
• PAY PCT FEES TO THE HOME PATENT OFFICE

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PATENT COOPERATION TREATY

• INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY
  CH.I (SEARCH REPORT WRITTEN OPINION) FROM ONE
  OF THE 11 MAJOR PATENT OFFICES (AT, AU, CA, CN,
  EP, ES, JP, KR, RU, SE, US)
• INTERNATIONAL APPLICATION PUBLISHED BY WIPO
• INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY
  CH.II (EXAMINATION REPORT) FROM ONE OF THE 11
  PATENT OFFICES MENTIONED ABOVE
• AMEND APPLICATION, IF NECESSARY

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PATENT COOPERATION TREATY

• ENTER THE NATIONAL PHASE AFTER 30 MONTHS FROM THE
  PRIORITY DATE
• AFTER CAREFUL EVALUATION OF THE OPINION EXPRESED
  IN THE SEARCH AND EXAMINATION REPORTS
• IN THE LIGHT OF ADDITIONAL TECHNICAL AND
  COMMERCIAL INFORMATION OBTAINED DURING THE 18
  MONTHS AFTER FILING PCT APPLICATION

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PATENT COOPERATION TREATY

• ONE INTERNATIONAL APPLICATION FILED WITH THE HOME
  PATENT OFFICE
• ONE FORMALITY CHECK PERFORMED BY THE HOME PATENT
  OFFICE
• ONE SEARCH REPORT FROM A MAJOR PATENT OFFICE
• ONE PUBLICATION BY WIPO
• ONE EXAMINATION REPORT FROM A MAJOR PATENT OFFICE
• ONE SET OF AMENDMENTS
• HAS EFFECT IN UP TO 126 COUNTRIES

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HOW MUCH DOES IT COST?
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PATENT COOPERATION TREATY

• EXAMPLE OF PCT FEES TO BE PAID
• BYINDIVIDUAL APPLICANTS FROM INDIA
• Transmittal fee CHF. 0 (RO/IB)
• International Filing fee CHF. 1400
• Less PCT-SAFE (Max.) CHF. 300 1100
• Less 75 redn. CHF. 825 275
• Search fee CHF. 247 522 (ISAATPO)
• Examination fee CHF. 247 769 (IPEAATPO)
• Handling fee (75 redn.) CHF. 50
  819_____________________________________________
  ________________________
• TOTAL PCT FEE (Ch.I) CHF. 522 USD. 454
• TOTAL PCT FEE (Ch.II) CHF. 819 USD. 715
• _________________________________________________
  ____________

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PATENT COOPERATION TREATY

• EXAMPLE OF PCT FEES TO BE PAID
• BY CORPORATE APPLICANTS FROM INDIA
• Transmittal fee CHF. 0 (RO/IB)
• International Filing fee CHF. 1400
• Less PCT-SAFE (Max.) CHF. 300 1100
• Less 75 redn. CHF. 0 1100
• Search fee CHF. 1920 3020 (ISAEPO)
• Examination fee CHF. 1910 4930 (IPEAEPO)
• Handling fee (75 redn.) CHF. 162
  5092____________________________________________
  _________________________
• TOTAL PCT FEE (Ch.I) CHF. 3020 USD. 2517
• TOTAL PCT FEE (Ch.II) CHF. 5092 USD. 4244
• _________________________________________________
  ____________

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PATENT COOPERATION TREATY

• EXAMPLE OF PCT FEES TO BE PAID
• BY ALL APPLICANTS FROM BHUTAN
• (IF BHUTAN WAS A PCT CONTRACTING STATE)
• Transmittal fee CHF. 0 (RO/IB)
• International Filing fee CHF. 1400
• Less PCT-SAFE (Max.) CHF. 300 1100
• Less 75 redn. CHF. 825 275
• Search fee CHF. 247 522 (ISAATPO)
• Examination fee CHF. 247 769 (IPEAATPO)
• Handling fee (75 redn.) CHF. 50
  819_____________________________________________
  ________________________
• TOTAL PCT FEE (Ch.I) CHF. 522 USD. 454
• TOTAL PCT FEE (Ch.II) CHF. 819 USD. 715
• _________________________________________________
  ____________

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SOME PERSPECTIVES

• Average Cost of Patent Protection in 11 major
  countries US50,000
• Cost of Obtaining Maintaining Patents in 40
  major countries gt US 500,000

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PATENT COOPERATION TREATY

• PCT COST

US 450 - 4250!
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PATENT COOPERATION TREATY

• PCT COST

USUALLY LESS THAN 4 OF THE TOTAL COST
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PCT STATISTICS
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PCT applications published in 2003 (Main
technical fields under the IPC)
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PCT Statistics (Developing Countries)
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PCT Filings from Developing Countries in 2003

• 5,950 applications from 32 countries

• Particularly high increaseby applicants from
• India (27)
• Republic of Korea (16)
• Brazil (8.3)
• China (7.2)

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MAJOR PCT APPLICANTS FROM DEVELOPING COUNTRIES
IN 2004
1. SAMSUNG ELECTRONICS CO. LTD.
(S.Korea) 2. LG ELECTRONICS INC.
(S. Korea) 3. HUAWEI TECHNOLOGIES CO., LTD
(China) 4. RANBAXY LABORATORIES LIMITED
(India) 5 AGENCY FOR SCIENCE,
TECHNOLOGY RESEARCH (Singapore) 6. ZTE
CORPORATION (China) 7. LG CHEM LTD.
(S.Korea) 8. ELECTRONICS AND
TELECOMMUNICATIONS RESEARCH INST.
(S. Korea) 9. COUNCIL OF SCIENTIFIC AND
INDUSTRIAL RESEARCH (CSIR) (India) 10. UT
STARCOM (S. Korea)
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PATENT APPLICATIONS IN INDIA
PATENT APPLICATIONS IN INDIA
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THANK YOU!