Chemistry Reference
In-Depth Information
be done within that year to enjoy the bene
t of the provisional application
'
s
filing date.
One word of caution
—
it is best tomake the provisional application as complete as it can be
when it is
it to preparing a provisional application using the
format andmeeting the formalities needed for a nonprovisional application. It is all too easy
to come to the end of the provisional application year and realize that there ismuchmore left
to do to get the provisional application into shape for nonprovisional
filed. There is also a bene
filing.
The PCT, or the
Patent Cooperation Treaty, is an international patent system.
27
The PCT allows a patent
applicant to
The third common patent application is a
“
PCT patent application.
”
file one international application and simultaneously seek patent protection
in all PCT member states, approximately 148 countries throughout the world at this time.
Many, if not all, countries of interest to most patent applicants are members of the PCT.
28
For example, Australia, Canada, China, European countries individually and through the
European Patent Of
ce, India, Japan, and the United States, all of which are common
countries of interest to pharmaceutical patent applicants, are members of the PCT. A PCT
application is a formal application in the same way as a nonprovisional application and
has the same basic structure and parts. A PCT application contains patent claims that are
examined as part of the PCT process.
Filing a PCT application gives the patent applicant an effective
filing date in the PCT
member states. The PCT, however, does not grant a patent. Instead, under the PCT, an
international application proceeds through two phases
the international phase and the
national phase. During the international phase, the application is published as an
International Application. Published PCT applications have numbers beginning with
the letters
—
indicating that the application was published by the World Intellectual
Property Organization (WIPO) that administers the PCT. PCT applications are published
approximately 18 months from their earliest
“
WO
”
filing date. A PCT application also
undergoes an international search that identi
es published documents relevant to the
patentability of the claimed invention. This search is reported in a published document
known as an International Search Report (ISR). Following the ISR, a preliminary and
nonbinding opinion on whether or not the invention is patentable under the PCT criteria
is prepared. This opinion is
first issued as a written opinion to which the patent applicant
may respond and later published as an International Preliminary Report on Patentability
(IPRP) The PCT patentability criteria are based on patentability criteria generally
accepted and in place internationally. There is also a subsequent optional international
preliminary examination available to PCT applicants. This international phase of the
PCT application takes place over about 28 months after earliest priority date or the PCT
application
filing date. The PCT international phase thus allows a patent applicant to
establish a
filing date in all PCT member states, to assess the patentability of the
invention in view of the ISR and IPRP, and then make a decision about entering the next
phase of the PCT process, the national phase.
27
For information on the Patent Cooperation Treaty, see
http://www.wipo.int/pct/en/
(last accessed April 3,
2014).
28
For a listing of PCT member states, see
http://www.wipo.int/pct/en/pct_contracting_states.html
(last
accessed April 3, 2014).
