Why and How PCT is Used

1
AIPLA FICPI Colloquium Reform of the PCT
Nice April 8-9, 2003
Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
2
Patent Cooperation Treaty? Why and how PCT is
used ?? Advantages and Problems
Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
3
Patent Cooperation TreatyThe original goals of
the Washington Treaty

• June 19th, 1970
• February 3rd, 1989
• September 28th, 1997
• October 3rd, 2001 (as in force from April 1st,
  2002)

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
4
Patent Cooperation Treaty

• The Contracting States,
• Desiring to make a contribution to the progress
  of science and technology,
• Desiring to perfect the legal protection of
  inventions,
• Desiring to simplify and render more economical
  the obtaining of protection for inventions where
  protection is sought in several countries,
• Desiring to facilitate and accelerate access by
  the public to the technical information
  contained in documents describing new
  inventions,

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
5
Patent Cooperation Treaty

• Desiring to foster and accelerate the economic
  development of developing countries through the
  adoption of measures designed to increase the
  efficiency of their legal systems, whether
  national or regional, instituted for the
  protection of inventions by providing easily
  accessible information on the availibility of
  technological solutions applicable to their
  special needs andb by facilitating access to
  the ever expanding volume of modern technology,
• Convinced that cooperation among nations will
  greatly facilitate the attainment of these aims,
• Have concluded the present Treaty

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
6
Economy

• Differ (some) translation costs
• but
• Transmittal fee 60
• Basic fee 444
• Designation fee 480
• Total 984
• Search fee 945
• Preliminary exam 1 430

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
7
PCT since new article 22 (1)

• No preliminary exam request necessary for 30
  months validation deadline (except Brazil)

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
8
Problems

• Some states are not members of PCT
  Argentine, Venezuela, Taïwan
• Competent receiving offices, very strict on
  formalities (drawings, priority )

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
9
Advantages / Drawbacks
1. From the applicant point of view

• Time for final decision
• - 1 year is short
• - 30 months is better
• - (temporary) Budget constraints
• Search report
• Preliminary examination

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
10
Advantages / Drawbacks
1. From the Third Parties point of view

• What is the real final intent of applicant ?
• Need to make (risky) assumption on applicants
  strategy

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003
11
Patent Cooperation TreatyConclusions

• One filing easy (last minute) access
• Buy time
• Access to publications easier but still
  national applications
• Increases risks

Thierry SUEUR Vice Chairman of the Patent Working
Group / UNICE Vice President / Intellectual
Property / AIR LIQUIDE Past President of LES
International April 8-9, 2003