Chemistry Reference
In-Depth Information
In the PCT national phase,
the PCT applicant selects which,
if any, of the
PCT member states he or she wants to
file the PCT application. In the national phase,
the PCT application is
filed in a member state and undergoes examination according to
the patent laws of that member state. It is the member state that grants a patent for its
country. Depending on the member state, the national phase application is typically due
at 30 or 31 months from the PCT application
s earliest priority date. There are typically
national fees and other formal requirements upon entering the national phase in a
member state. Once those are completed, the examination process proceeds in the
member state
'
ce.
It is not unusual for a PCT application to enter the national phase in 5 or even
10 member states. All information from the PCT international phase is provided to the
national phase member state and considered in the national phase examination. Thus,
national phase
'
s patent of
filing can be an expensive undertaking. When used most effectively, the
PCT international phase informs not only the national phase examination but also the
selection of national phase states in which to
file the PCT application.
Before a patent is granted in any country, the patent application is examined to
determine whether it satis
s legal requirements for patentabil-
ity. While the criteria applied in most countries are similar to one another, each country
has its own patent laws and its own patent procedure. The
es the particular country
'
first step to obtaining a patent is
filing a patent application such as a nonprovisional application or a PCT national phase
application. A patent examiner then examines the patent application.
To be patentable, an invention must be new and useful (have a practical utility).
As discussed above, the patent application must describe the invention and have one or
more patent claims that set out the invention to be patented. During examination, the
patent examiner focuses on the claimed invention to ensure that it meets statutory
requirements of novelty and nonobviousness as well as on the patent speci
cation that
must describe the invention. During the course of examination, the patent examiner
issues
ce actions, the examiner
states whether or not the claims are patentable and, if they are not, gives reasons why.
The examiner
“
of
ce actions
”
to the patent applicant. In these of
'
s reasons are stated as
“
objections
”
that generally relate to matters of
form or as
that give reasons why the claims do not meet the statutory
requirements for a patent. Where there are issues of novelty or obviousness, the
examiner may rely on
“
rejections
”
documents (e.g., earlier published articles or patents)
that the examiner believes show that the claimed invention lacks novelty (is not new)
or would have been obvious to a person skilled in the art. A patent applicant is entitled
to respond by providing arguments to rebut the examiner
“
prior art
”
s positions, by amending
(revising or rewriting) the claims, or both. Typically, there are about two of
'
ce actions
and responses during examination before other procedures become available as part of
patent examination. Patent examination does not necessarily end with the two of
ce
actions and responses but can continue down various avenues in each patent of
ce. A
patent is granted when the patent examiner concludes that all statutory requirements
are met. Generally speaking, patent examination proceeds along similar avenues in all
patent of
ces, although the preceding discussion only sketches the contours of patent
examination.
