PCT Support Office

In recent years, economic globalization has progressed rapidly, and acquiring rights overseas has become increasingly important in order to advance into overseas markets and secure an advantage. In order to obtain a patent overseas, the principle is to file a patent application directly in that country, but it is very time-consuming to file a patent application in each country in which you wish to obtain a patent. Masu.
The international application system based on the Patent Cooperation Treaty (PCT) is a framework to improve the complexity and inefficiency of direct applications to each country. Since the start of operation, the number of PCT applications has continued to increase every year, with the exception of 2009, which was affected by the financial crisis, which shows that the value of using the service has increased significantly.

Number of international applications
So, why is the value of using the PCT international application system increasing?
That is, the PCT international application system has various advantages compared to direct foreign applications.Merit.
In particular, the ability to carefully consider the countries in which you wish to acquire rights while taking into account market and technological trends while securing filing dates in PCT member countries will help you deepen your international intellectual property strategy. , it will be a big advantage.
On the other hand, users of the PCT international application system have pointed out the problem that the procedures in the international phase are complicated. In this regard, although treaties and regulations have been revised repeatedly and the system is becoming easier to use, specialized knowledge is still required.
Our patent office is
① We have the specialized knowledge and know-how based on many years of experience necessary to use the PCT international application system,
② Specialists who are familiar with all procedures related to the PCT international application system are permanently stationed.
③ Through collaboration between staff with advanced language skills and foreign staff, we are able to accurately communicate with foreign agents who wish to obtain patents.

We are constantly striving to improve our specialized knowledge regarding the PCT international application system, and are always striving to provide services that satisfy our customers.
If you have any questions regarding the PCT international application system, please feel free to contact the PCT Support Office. Our entire staff will respond quickly and appropriately.

 

PCT Support Office Manager Takusei Yuguchi

 

table of contents

For Visitors

There is a law called the Patent Act as a legal system to protect inventions as property rights, and property rights called patent rights protect inventions. However, the effect of patent rights only extends to the territory of the country where the patent was obtained, and does not extend beyond the territory of the country where the patent was obtained overseas. Therefore, if you want to obtain a patent in a specific country, you must, in principle, file a separate patent application with the patent office of that country. Therefore, the more countries you want to obtain a patent for, the more effort, time, and expense it will take to file a patent application.

Therefore, the international treaty PCT (Patent Cooperation Treaty: Patent Cooperation Treaty) was concluded.

If you use the international application system based on the PCT, you can submit one application document prepared in your native language (Japanese or English if the receiving office is the Japan Patent Office) to one patent office (receiving office). You can obtain the same effect as applying to all PCT member countries (2012 countries as of October 10).

In this way, the international application system based on the PCT is an internationally unified system for patent application procedures, and is an effective system when you want to obtain patents in many countries.

 

What is a PCT international application?

Whether an invention is patentable or not is determined based on each country's patent laws. Therefore, when developing a business based on an invention in a foreign country, it is important to obtain patent rights in the foreign country to protect the invention and eliminate counterfeit products. The decision to grant a patent right is made by each country based on its respective patent law, and its effect is limited to the territory of the country where the patent right was acquired (territorial principle). Therefore, in order to obtain a patent in a specific country, the general rule is to file a patent application directly in that country.

Furthermore, it is important to file an application for an invention as soon as possible (first-to-file principle). However, it is very time-consuming to file patent applications individually for all the countries in which you want to obtain a patent.

The PCT international application system is an international patent application system that can be used to improve the complexity and inefficiency of direct applications, which involve filing applications in various countries in various formats and languages. A PCT international application is filed simultaneously in all member countries by submitting one internationally unified application document to the patent office of the PCT member country (2012 countries as of October 10). You can get the same effect.

In other words, the PCT international application system allows you to (1) prepare one application document in (2) your native language (Japanese or English if the receiving office is the Japan Patent Office), (3) submit it to your home country's patent office, and (4) This is a system that provides the same effect as filing a domestic patent application on the same day as the PCT international application (5) for all PCT member countries in effect on that date.

Please note that a PCT international application is just an application procedure, and the final determination of patentability is left to the examination by each country's patent office.

 

 

Advantages of using a PCT international application

With one application, you can secure a “filing date” in all member countries.

The filing date given to a PCT international application (international filing date) is the filing date in all PCT member countries.

Easy and efficient procedure

Filing a PCT international application has the same effect as filing a domestic application in all PCT member countries. Furthermore, most international phase procedures can be carried out with the receiving Office, which is the national patent office. Therefore, the procedure is easier and more efficient than direct application, which requires filing in each country in each country's language.

There is no need to decide in which country you want to obtain rights at the time of filing.

For PCT international applications, there is a grace period of 30 months (with some exceptions) from the priority date before completing the national phase procedure. By effectively utilizing time longer than the priority period (12 months) of the Paris Convention, it is possible to assess patentability, market trends, standardization trends, etc., so that the domestic phase can only be transferred to countries that truly need it. You can do it. As a result, costs related to domestic migration can be kept to a minimum.

Provides materials for determining patentability

All PCT international applications are subject to an "international search" to determine whether there is any prior art related to the invention. The results of the international search will be provided to the applicant as an international search report and a written international search opinion before being published internationally. Additionally, if the applicant wishes, it is possible to undergo a preliminary examination (international preliminary examination) regarding the requirements for obtaining a patent. These can be effectively used as materials for evaluating inventions.

You can apply in your native language (Japanese or English if the receiving office is the Japan Patent Office) even just before the priority period.

If you claim priority based on an already filed domestic application, you can enjoy the benefit of priority by filing abroad within 12 months, but if there are many countries where you want to receive a patent, translation may not be done in time. You may. PCT international applications can be filed in your native language (Japanese or English if the receiving office is the Japan Patent Office), so you can apply even just before the priority claim deadline.

Comparison of applications to national patent offices and PCT

 

 

Patent Prosecution Highway (PCT-PPH)

By utilizing the PCT international filing system, you can use the Patent Prosecution Highway (PPH).

PPH is a framework that aims to facilitate the early acquisition of rights overseas, reduce the examination burden, and improve quality. For applications containing inventions that have been determined to be patentable in the first country of application, upon request by the applicant, an accelerated examination can be obtained through simple procedures in the second country of application.

The Japan Patent Office is trialling the Patent Prosecution Highway (PCT-PPH) program, which utilizes the international phase products of PCT international applications. Under the PCT-PPH program, the written opinion prepared by a specific International Searching Authority or the international preliminary examination report prepared by a specific International Preliminary Examining Authority can be used to You can apply for expedited review.

PCT-PPH is effective when protecting technologies that require early patenting. If you aim to obtain rights early, you can use PCT-PPH, but if you want to take time to decide whether to enter the country, you can choose to use the grace period of 30 months from the priority date without using PCT-PPH. is.

patent prosecution highway

 

 

Main procedures for PCT international application

Overview of PCT International Applications and Procedure Periods

Flowchart

 
 

 

international application

The international application system allows you to apply to all PCT member countries by submitting one application document prepared in your native language (Japanese or English if the receiving office is the Japan Patent Office) to one patent office. This is a system that provides the same effect as filing an application (Article 3 of the Convention, etc.).

International application documents

An international application includes a request, specification, claims, necessary drawings, and abstract (Article 3(2) of the Convention). Each document must meet certain formatting requirements.

Additionally, international applications must be filed in a language recognized by the receiving Office in which they are filed (Articles 3(4) and 11(1)(ii) of the Convention). In Japan, application documents must be prepared in Japanese or English.

Where to submit your international application

An international application may be filed with the national office (receiving Office) of a contracting state if the applicant is a resident or national of that state (Articles 9 and 10 of the Convention). In Japan, an international application can be filed with the Japan Patent Office (receiving office) if at least one of the applicants in the international application is a Japanese citizen or resident.

Additionally, the International Bureau of WIPO accepts international applications from nationals or residents of all PCT member states as a receiving office.

Recognition of international filing date

The receiving Office will recognize the international filing date if the international application has been prepared in accordance with the PCT Treaty and Regulations. The requirements for recognition of the international filing date are specifically enumerated in Article 11(1)(i)-(iii) of the Convention.

An international application whose international filing date has been recognized has the effect of being a regular national application in each designated country from the international filing date, and the international filing date is considered to be the actual "filing date" in each designated country ( Article 11(3),(4) of the Convention). This allows applicants to receive the same benefits as filing directly in each designated country by filing one international application with one receiving Office.

An international application with a recognized international filing date is deemed to have designated all PCT member countries valid as of the filing date (deemed all designation).

Fees

Applicants for international applications must pay 1) international application fees (fees for the WIPO International Bureau to process application documents) and XNUMX) transmission fees (for the receiving Office to process application documents and submit required documents) within one month of filing. ③Search fee (fee for international search) must be paid to the receiving Office.

When filing an international application with a Japanese receiving office, all fees must be paid in Japanese yen.

 
 

 

international search

The international search system is a system in which the competent international search authority conducts a search for all international applications for which the international filing date has been recognized, with the aim of discovering prior art related to the claimed invention. (Articles 15 to 19 of the Convention, etc.).

international search report

The International Searching Authority shall provide a list of prior art found to be relevant or documents describing the relevant technology, a classification of the invention (International Patent Classification), the technical field in which the search was conducted, and information regarding the lack of unity of invention. An international search report containing information will be prepared and sent to the applicant (Article 18(2) of the Convention). The international search report will help you decide whether to proceed with the international application or consider withdrawing the designated countries.

The international search report will be prepared within 3 months from the receipt of the search copy by the International Searching Authority or 9 months from the priority date, whichever is later.

Opinion by the International Searching Authority (written international search opinion)

The International Searching Authority determines whether the invention stated in the claims of the international application is deemed patentable (novelty, inventive step, industrial applicability) (determining patentability of each requirement , priority date is the reference date) will be prepared and sent to the applicant. Similar to the international search report, the international search opinion helps in deciding whether to proceed with the international application or in considering withdrawal of designated countries.

The opinion on patentability expressed in the written international search opinion is preliminary and non-binding, so the final determination of patentability is left to each designated office.

The international search opinion, like the international search report, is prepared within 3 months from the receipt of the search copy by the International Searching Authority or 9 months from the priority date, whichever is later.

supplementary international search

In addition to the above-mentioned international searches, there is a supplementary international search, which provides for an international search by another International Searching Authority at the applicant's voluntary request.

By requesting a supplementary international search, additional prior art can be identified during the international phase, thereby reducing the possibility that new prior art documents will be discovered during the national phase.

When requesting a supplementary international search, the applicant must submit a request form (PCT/IB/19) and pay the prescribed fee to the International Bureau of WIPO within 375 months from the priority date. If a supplementary international search is requested, the Supplementary International Searching Authority will draw up a supplementary international search report within 28 months from the priority date.

 

 

international release

The international publication system is a system in which, in principle, the International Bureau publishes the contents of international applications in a uniform manner in a prescribed language and format 18 months after the priority date (Article 21 of the Treaty). This international publication serves to provide technical information to third parties. The applicant may also request international publication (early publication) before the expiration of 18 months from the priority date (Article 21(b) of the Convention).

Contents of international release

The contents to be internationally published are: (19) bibliographic page (front page with information such as international filing date, international application number, applicant, designated country, abstract, etc.), (21) full text of description, claims, and drawings, and (3) international search. Report, ④ If there is an amendment to Article 4 of the Convention, the amended scope of claims, etc. (Article 30(XNUMX), (XNUMX) of the Convention). The international search opinion will be available for inspection after XNUMX months from the priority date.

International publication language

International applications filed in "Japanese, Arabic, Chinese, English, French, German, Russian, Spanish, Korean, and Portuguese" will be published internationally in that language. International applications filed in languages ​​other than these will be published in one of the publication languages ​​translated by the applicant.

Even if the international application is filed in a language other than English, the title of the invention, abstract, and international search report will be published in both the relevant language and English translations.

Effect

In addition to internationally publishing inventions that have already been filed, international publication has the same effect as that provided by the domestic laws of each designated country regarding compulsory domestic publication of unexamined domestic applications. (Article 29 of the Convention).

For example, under the domestic law of a designated country that grants "provisional protection" upon publication of a national application, the same protection is granted to an international application that is published internationally.

In Japan, if a Japanese language international application is published internationally (or a foreign language patent application is published domestically), the right to claim compensation arises (Article 184-10 of the Patent Law).

 

 

international preliminary examination

The International Preliminary Examination System provides, at the applicant's request, a preliminary and non-binding opinion regarding the patentability (novelty, inventive step, industrial applicability) of an invention claimed in an international application. This is the system provided by the competent International Preliminary Examining Authority (Articles 33 to 35 of the Convention, etc.). The international preliminary examination provides a more advanced opinion on the substantive content than the international search.

Request for international preliminary examination

When requesting an international preliminary examination, the applicant must file an international You must submit a request for preliminary examination and pay the fee.

Other effects

By requesting an international preliminary examination, it becomes possible to (34) make amendments to the description, drawings, and claims (Article XNUMX of the Treaty), and (XNUMX) submit a written reply.

 

 

correction

The PCT allows amendments to improve the subject matter of the invention after a filing date has been secured. Therefore, applicants can amend their application contents to reflect, for example, (1) market trends, (2) matters pointed out in the international search and international preliminary examination, and (3) trends in international standards. .

The PCT allows amendments under Article 19 of the Treaty and amendments under Article 34 of the Treaty in the international phase. Furthermore, amendments after the national phase procedure are allowed.

 

Article 19 amendment, Article 34 amendment

After receiving the international search report, the applicant may amend the claims of the international application pursuant to Article 19 of the Convention. In addition, the applicant may submit a brief explanation explaining the content of the amendment, if necessary.

In addition, an applicant who has requested an international preliminary examination may submit the description, claims, and drawings of the international application within the prescribed period before the international preliminary examination report is prepared, pursuant to Article 34 of the Convention. It can be corrected.

A comparison of the amendments based on Article 19 of the Convention and the amendments based on Article 34 of the Convention is as follows.

  Amendment based on Article 19 of the Convention Amendment based on Article 34 of the Convention
person who can correct Applicant receiving the international search report Applicant who requested international preliminary examination
Target of correction Claims only Specification, claims, and drawings
Number of corrections limited to one time There is no limit to the number of times
Range of correction In principle, the scope of disclosure at the time of filing
cannot exceed
In principle, the scope of disclosure at the time of filing
cannot exceed
Time for correction From the date of sending the international search report
2 months or 16 months from the priority date
Whichever is later expires.
Within the period
Before the international preliminary examination report is prepared
within a given period.
(Please note that the provisions of the treaty state that “Regarding patentability
Preparation of the International Preliminary Report (Chapter II) has begun.
Although it is possible to submit amendments before the
International preliminary examination that takes into account the amendments to Article 34
International preliminary examination
Submit the first Article 1 amendment at the time of request.
recommend to. )
Where to submit the written amendment WIPO International Bureau International Preliminary Examining Authority
Language of amendment As a general rule, the language of the international application As a general rule, the language of the international application
Subject of international publication Become must not

Amendments after national entry

Applicants who have completed the national phase can make amendments at each designated Office based on Article 28 (and Article 41) of the Convention. However, in this case, the scope, period, procedures, etc. of amendments will be subject to the domestic laws and regulations of each designated country. In Japan, amendments under Article 17 of the Patent Law fall under this category, and the principle is that amendments can be made as long as the international application is pending with the Patent Office.

 

 

Domestic migration

An international application has the same effect as filing in multiple countries at the same time by filing one application with one receiving office. However, the PCT leaves substantive requirements to the domestic laws of each designated country, and each designated country makes the final decision on whether to grant a patent. Therefore, in order to seek the grant of a patent in each designated country, it is necessary to take steps to move the procedure from the international phase to the national phase of each designated country.

Migration deadline

The national transition to the designated country in which you wish to acquire rights must be carried out within the period determined by the Convention (Articles 22(1) and 39(1)(a) of the Convention).

In principle, the period specified by the treaty is within 30 months from the priority date, but in Europe it is stipulated to be within 31 months. In addition, for Luxembourg, Uganda, and Tanzania, unless a request for international preliminary examination is filed, the deadline is 20 months (or 21 months) from the priority date (as of March 2010).

procedure

Procedures for transferring an international application to the national phase include the following procedures with the designated office. However, regarding ③, fewer countries, including Japan, actually make the request.

① Submission of translated text

If the language in which the international application is drawn up is not a language recognized by the designated country in which you wish to enter the national phase, it must be translated into the language in which the international application is recognized.

②Payment of domestic fees

Domestic fees must be paid if required by the national laws of the designated country.

③ Submission of a copy of the international application

This may be required if the designated State has not yet obtained a copy of the international application from the International Bureau of WIPO.

Effect

If the national phase procedure is completed within the prescribed period, the international application will be treated in the same way as a national application in the designated country where the national phase has occurred. Therefore, after entering the country, procedures must be carried out in accordance with the domestic laws and regulations of those countries.

Furthermore, since most designated offices restrict foreigners from filing procedures directly with the Patent Office, domestic laws and regulations require that domestic procedures be carried out by appointing an agent in the designated country. (In Japan, Patent Law Article 184-11).

On the other hand, if the applicant does not carry out the national phase procedure within the prescribed period, the international application lapses with respect to the designated countries in which there was no national phase, with the same effect as the withdrawal of the national application in that country (in many cases , the international application shall be considered withdrawn) (Article 24 of the Convention).

 

Other specific procedures

Procedures for partial refund of international search fees

If the International Searching Authority is able to use a significant portion of the examination results of the national application or the search results of the international application, which are the basis of the priority claim, in preparing the international search report, a portion of the international search fee will be refunded. (Rule 16.3).

1. When filing an international application, please include a "Request for Use of Previous Search" in the application form.
2. If the examiner of the International Searching Authority determines that the earlier search results can be used, he/she will issue a notification to that effect to the applicant.
3. The applicant submits a "Request for Partial Refund of International Search Fees" to the Japan Patent Office (International Searching Authority).
Four. A portion of the international search fee paid at the time of international application (for applications made after April 4, 2012, 4 yen of the 1 yen international search fee) will be returned to the applicant.

If you wish to request the use of the examination results of an earlier national application, please submit the following information at the earliest possible stage before the start of the international search: (1) Request for examination of the earlier national application and (2) Withdrawal of the designation of Japan in the international application. You need to complete the procedure.

Additionally, if you request the use of the search results of an earlier international application, the International Searching Authority that searches the earlier international application must be the Japan Patent Office.

If the International Searching Authority is the European Patent Office, please check the relevant WIPO website.

http://www.wipo.int/pct/guide/ja/gdvol1/annexes/annexd/ax_d_ep.pdf

 

 

Name change procedure

Information regarding the applicant, such as the applicant's name, inventor's name, and addressee name, can be changed during the international phase by submitting a change of name notification (Rule 92.2-1).

The name change notification should be submitted to the Japan Patent Office (receiving office) or WIPO (International Bureau). If submitted to the Japan Patent Office, the Japan Patent Office will send it to WIPO.

Please note that the name change notification will ultimately be accepted by WIPO, so submitting it directly to WIPO will allow the name change to be reflected more quickly. In particular, if you wish to have the information after the name change published in the International Publication Bulletin, which is about to be published, we recommend that you submit it directly to WIPO.

If you change your name at the international stage, each transition country will be notified of the changed details with just one procedure, and there is no need for notary certification or the submission of a power of attorney, so you can change your name in each transition country. The procedure will be simpler than when doing so.

 

 

Information provision

After the international application has been published, information regarding the novelty and inventive step of the invention related to the international application can be provided through the electronic system provided by WIPO (International Bureau) within 28 months from the priority date. Please note that the information provided is limited to information regarding novelty and inventive step, but it is useful for speeding up the examination and eligibility.

The information provided will be sent to each international organization (the competent International Searching Authority before the preparation of the international search report and the competent International Preliminary Examining Authority before the preparation of the international preliminary examination report) and made available to the public.

Applicants can submit comments regarding the information provided to WIPO (International Bureau).

 

 

Avoidance of deemed withdrawal

In principle, an international application is deemed to have designated all PCT contracting states (deemed all designation). If you file an international application claiming priority based on a Japanese domestic application, you are claiming domestic priority, and the earlier domestic application was withdrawn 1 year and 3 months after the earlier filing date. (Articles 41 and 42 of the Patent Law).

Therefore, if you wish to proceed with acquiring rights in Japan using an earlier domestic application, you will need to avoid the deemed withdrawal of the earlier domestic application by using one of the methods below.

 

Method 1: Exclusion of Japan designation

You can exclude the designation of Japan by checking the checkbox provided in the international application form (Column V). As a result, the international application will not designate Japan, so the earlier domestic application on which the domestic priority is based will not be deemed withdrawn.

However, please note that if you check this checkbox to remove the designation of a designated country, you will not be able to reinstate the designation of the designated country.

Method 2: Withdrawal of Japan's designation

Japan's designation can be withdrawn by submitting a "Designation withdrawal form" to the receiving office at least 1 year and 3 months from the earlier filing date when the earlier domestic application is deemed to be withdrawn. can. As a result, the international application will not be able to enter the national phase in Japan, so the earlier domestic application that forms the basis of the domestic priority will not be deemed to be withdrawn.

Method 3: Withdrawal of domestic priority claim

A claim for domestic priority can be withdrawn by submitting a written statement to the receiving office 1 year and 3 months from the filing date of the earlier domestic application, when the earlier domestic application is deemed to be withdrawn. As a result, both the earlier domestic application that is the basis of the domestic priority and the international application that has entered the national phase will be pending in Japan's domestic procedures, regardless of the priority.

 

 

Restoration of priority

Even if an international application claiming priority is filed beyond the 12-month priority period, if the international filing date is within 2 months of the expiry of the priority period, the application will be immediately invalidated. During the international phase, the priority claim is maintained (Rule 26bis.2.2).

However, in order for the priority claim maintained in this way to be valid after entering the national phase, the applicant must claim the priority claim to the Japan Patent Office and the International Bureau as receiving Offices or to each designated Office. (Article 49-3).

(From April 1, 2015, it is now possible to request restoration of priority to the receiving office, the Japan Patent Office.)

In order for priority to be restored, the following conditions must be met (Rule 26, 2.3).

  • The international application must have been filed within two months of the expiry of the 12-month priority period.
  • The reason for failure to comply with the priority period must meet the ``criteria for recovery'' adopted by each agency (e.g., ``unintentional,'' ``despite taking due care as required by the circumstances.'') )
  • The request for priority restoration, the reason why the international application was not filed within the priority period, and evidence supporting the reason must all be submitted within two months from the expiration of the priority period.

In principle, priority rights restored by the Japan Patent Office as a receiving Office that adopts the “due diligence” standard are valid in designated countries that do not reserve the provisions of PCT Rule 49ter.3.1. (Regulation 49, 3.1(a)(c)(d)).

If you wish to request restoration of priority with the International Bureau as a receiving Office that adopts the "unintentional" standard, you will need to file an international application with the International Bureau.

Please note that South Korea and China are subject to transitional measures. *1

Please check the relevant WIPO website for the latest information on countries applying transitional measures.

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html

※ 1

  • The receiving authorities have declared the application of transitional measures to 14 countries: Belgium, Brazil, Colombia, Cuba, Czech Republic, Germany, Algeria, Greece, Indonesia, India, Italy, South Korea, Norway, and the Philippines.
  • The 15 countries that have declared application of transitional measures at designated authorities are Brazil, Canada, China, Colombia, Cuba, the Czech Republic, Germany, Algeria, Indonesia, India, South Korea, Mexico, Norway, the Philippines, and Turkey.

 

 

Correction (supplementation)/addition of priority claim

It is possible to correct or add priority claims that were incorrectly claimed or failed to be claimed when filing the international application (Rule 26bis).

In principle, corrections and additions to priority claims can be made within four months from the international filing date. However, if the earlier of (A) or (B) below expires later than the principle (4 months from the international filing date), the principle does not apply and the earlier of (A) or (B) expires later than the principle (XNUMX months from the international filing date). Corrections and additions are permitted until the expiration date.

(A) 16 months from the priority date claimed in the application;
(B) 16 months from the new priority date as changed by correction or addition of priority claim;

Procedures are carried out at the Japan Patent Office (receiving office) or WIPO (International Bureau). When filing procedures with the Japan Patent Office, if there is an error in the indication of the priority claim, submit a "procedural amendment", and if you wish to add a priority claim, submit an "application for addition of priority claim". .

Please note that when filing procedures with WIPO, there is no prescribed format for the document, so submit it in the form of a letter.

 

Withdrawal of priority claim

The applicant may withdraw the priority claim until the expiry of 30 months from the priority date (Rule 90bis.2.3). If two or more priority rights are involved, any or all of them can be withdrawn.

Procedures are carried out at the Japan Patent Office (Receiving Office), WIPO (International Bureau), or where Article 39(1) of the Convention applies, the Japan Patent Office (Preliminary Examining Authority) or the European Patent Office (Preliminary Examining Authority). Do it for. When proceeding with the Japan Patent Office, a "Letter of Withdrawal of Priority Claim" will be submitted.

Please note that when filing procedures with WIPO or the European Patent Office, there is no prescribed format for the document, so submit it in the form of a letter.

 

Withdrawal of international application

The applicant may withdraw the international application until the expiry of 30 months from the priority date (Rule 90bis.2.1).

Procedures are carried out at the Japan Patent Office (Receiving Office), WIPO (International Bureau), or where Article 39(1) of the Convention applies, the Japan Patent Office (Preliminary Examining Authority) or the European Patent Office (Preliminary Examining Authority). Do it for. When proceeding with the Japan Patent Office, a "Letter of Withdrawal of International Application" must be submitted.

Please note that when filing procedures with WIPO or the European Patent Office, there is no prescribed format for the document, so submit it in the form of a letter.

When an international application is withdrawn, it loses its effect in the same way as when a national application is withdrawn in a designated country (Article 24(1)(i) of the Convention).

By making effective use of the withdrawal of an international application, it is possible to obtain the results of an international search while preventing the content of the invention from being internationally published. In this case, the international application must be withdrawn within 16 months (17 months if filed with WIPO) from the priority date.

 

Replenishment of missing statements, etc.

Missing parts or elements of the international application that are accepted by the receiving Office may be included in the international application by late filing, even after the international filing date has been granted (Rules 20.3, 20.5).

・Missing parts are parts that are missing or appear to be missing from the description, claims, and drawings of the international application.
- Missing elements are the elements of the international application specified in Article 11(1)(iii)(d) or (e) of the Convention.

If you wish to fill in gaps, you must submit a "Procedure Supplementation Statement" to the receiving Office within two months from the date on which the receiving Office first receives the documents submitted as an international application.

However, please note that the international filing date will be changed to the date of the submission. If delaying the filing date is disadvantageous to the applicant, the applicant may request the receiving Office to ignore the omission (Rule 20.5).

Furthermore, if the receiving Office recognizes that the basic application of the international application claiming priority completely contains the missing parts or missing elements, the missing parts or elements can be supplemented without delaying the international filing date. (Rule 20.6). This is called "citation supplementation."

 

 

International search/international preliminary examination

international search

Overview of the international search system

For all international applications for which the international filing date has been recognized, an international search is conducted by the International Searching Authority, and an international search report and written opinion of the International Searching Authority are prepared (Articles 15 to 18 of the Convention, etc.).

An international search is conducted for the purpose of discovering related prior art in order to determine whether the invention stated in the claims of the international application has novelty and inventive step.

Relevant prior art is art that is made available to the public by written disclosure (including drawings or other illustrations) anywhere in the world and that is described in the claims. (Rule 33.1(a)).

Also, based on the written opinion of the International Searching Authority, whether the invention described in the claims is considered novel or involves an inventive step (not obvious). Opinions will be presented on whether the product is considered to have industrial applicability, etc.

The International Searching Authority is specified by the receiving Office, and the International Searching Authority for international applications accepted by the Japan Patent Office is the Japan Patent Office for Japanese-language applications, and the Japan Patent Office or the European Patent Office (for English-language applications). (selected by the person).

In principle, the subject matter of an international search is all international searches, with the following exceptions: [subjects that do not require a search by the International Searching Authority] and [cases where the international application does not satisfy unity of invention]. This is an application.

[Objects not subject to search by the International Searching Authority] (Rule 39.1)

(i) Scientific and mathematical theories
(ii) plant and animal varieties or essentially biological methods of plant and animal production; However, this does not apply to microbiological methods and products produced by microbiological methods.
(iii) plans, rules or methods for business activities, the performance of purely mental acts or games;
(iv) Methods for treating the human or animal body through surgery or therapy, and methods for diagnosing the human or animal body.
(v) Mere presentation of information
(vi) Computer programs that are outside the scope of which the International Searching Authority is prepared to search for prior art with respect to such programs;

[If the international application does not satisfy unity of invention]

- If the international application does not satisfy unity of invention, the International Searching Authority will ask you to pay an additional fee. If you do not pay the additional fee in response to this request, the international search report will be prepared only for the portion of the invention that is first mentioned in the claims (the "main invention"). Furthermore, if you pay additional fees in response to a request from the International Searching Authority for payment of additional fees, an international search report will be prepared for the portion of the invention for which the additional fees were paid (Article 17(3) of the Convention) (a)).

- Criteria for determining unity are stipulated by the PCT Regulations. The criteria for determining whether an international application satisfies unity of invention can be considered to be almost the same as the Japanese Patent Office's patent examination guidelines.

- An international application may only be filed for one invention or a group of inventions that are linked to form a single general inventive concept (Rule 13.1).

- If a group of inventions are claimed in the same international application, there is a technical relationship between these inventions that includes one or more of the same or corresponding special technical features. Only in certain cases will the requirement of unity of invention set out in Rule 13.1 be fulfilled. "Special technical features" means technical features that demonstrate the contribution that each claimed invention as a whole makes over the prior art (Rule 13.2).

・The determination of whether a group of inventions are linked to form a single general inventive concept is based on whether these inventions are stated in separate claims or are alternative to a single claim. without regard to what is stated in the form (Rule 13.3).

 

Written opinion of the International Searching Authority (ISA written opinion, ISO)

The International Searching Authority's written opinion is prepared by the International Searching Authority and examines whether the invention described in the claims is novel, and involves an inventive step (not obvious). This is a written opinion regarding whether or not the product is recognized as having industrial applicability.

The International Searching Authority's written opinion may also include observations regarding the clarity of the claims, the description and drawings, or whether the claims are sufficiently supported by the description. there is.

Before proceeding to the national phase of each country, the applicant of an international application must obtain an international opinion from the International Searching Authority regarding the novelty, inventive step, and industrial applicability of the claimed invention. You can get the opinion of the research organization.

 

(2-1) Criteria for determining novelty

The PCT Treaty and Regulations provide that a claimed invention shall be novel in the absence of any relevant prior art (Article 33 of the Treaty). (2), Rule 43bis.2.1(b)).

"Prior art" here means anything made available to the public by written disclosure anywhere in the world before the reference date (Rule 64.1(a)); ``Reference date'' is the international filing date or, if the international application carries a valid claim of priority from an earlier application, the date of the earlier application (Rule 64.1(b)).

 

(2-2) Criteria for determining inventive step

The PCT Treaty and Regulations provide that a claimed invention does not involve an inventive step if it is not obvious to a person skilled in the art on a given reference date in view of the prior art as defined in the Regulations. (Article 33(3) of the Convention, Rule 43bis.2.1(b)).

"Obvious" here means that it is obvious and logically derived from the prior art without going beyond the normal advancement of technology.

In addition, the basic considerations to be applied when determining inventive step are as follows.

(i) The claimed invention must be considered as a whole.
(ii) The references must be considered as a whole and must motivate or encourage a person skilled in the art to combine the teachings of the documents in order to arrive at the claimed subject matter.
(iii) References must be considered without the unauthorized benefit of hindsight afforded by the claimed invention.

More specific criteria for novelty and inventive step are as follows:PCT International Search and Preliminary Examination Guidelines (Japanese provisional translation) Part III Examiner considerations common to the International Searching Authority and the International Preliminary Examining Authority” (Japan Patent Office).

 

What to do after receiving an international search report

(3-1) Amendment based on the provisions of Article 19 of the Convention

The applicant may amend the claims only once (Article 2 amendment) within a period of two months from the date of sending the international search report or 16 months from the priority date, whichever expires later. (Article 1, Regulation 19 of the Convention).

Amendments pursuant to the provisions of Article 19 of the Convention cannot go beyond the scope of disclosure of the international application at the time of filing (Article 19(2) of the Convention)

If an amendment is made pursuant to Article 19 of the Convention, the amended scope of claims will be published internationally (Rule 48.2(f)). Additionally, the amended scope of claims will be communicated by the International Bureau to the designated Office (Article 20(2) of the Convention).

By amending the scope of claims in the international phase based on the provisions of Article 19 of the Treaty, it is possible to carry out the amendment procedures after entering the national phase in advance, and it is possible to enter the national phase in the amended state. . Therefore, it can be said that there is an advantage in correcting obvious deficiencies at the international stage.

 

(3-2) Submission of informal comments

Applicants cannot formally object to the written opinion of the International Searching Authority, but may submit informal comments to the International Bureau to the written opinion of the International Searching Authority.

Informal comments will be forwarded by the International Bureau to the designated Offices, but whether or not to take them into consideration will be at the discretion of each national patent office examiner.

 

(3-3) Request for international preliminary examination

An applicant can undergo an international preliminary examination of an international application by filing a request for an international preliminary examination. The request for international preliminary examination must be filed within 3 months from the date of sending the international search report and the written opinion of the International Searching Authority or the declaration that no international search report will be filed, or 22 months from the priority date, whichever expires later. (Rule 54, paragraph 2.1(a)).

 

 

international preliminary examination

Overview of the international preliminary examination system

If the applicant files a request for an international preliminary examination within the prescribed time limit, the International Preliminary Examining Authority will conduct an international preliminary examination and prepare a written opinion of the International Preliminary Examining Authority and an international preliminary examination report (Article 33 of the Convention). ~Article 35, etc.) The deadline for filing a request for international preliminary examination is 3 months from the date of sending the international search report and the written opinion of the International Searching Authority or a declaration that no international search report will be filed, or 22 months from the priority date, whichever is later. (Rule 54bis.2.1(a)).

The purpose of the international preliminary examination is to provide a preliminary and non-binding opinion on the novelty, inventive step and industrial applicability of the claimed invention (Article 33 of the Convention). (1)). In addition, if amendments have been made pursuant to Article 19 of the Convention, such amendments will be taken into account at the international preliminary examination (Rule 66.1(c)).

The International Preliminary Examining Authority is specified by the receiving Office, and the competent International Preliminary Examining Authority for international applications accepted by the Japan Patent Office as the receiving Office is the Japan Patent Office for Japanese applications and the Japan Patent Office for English applications. Office or the European Patent Office (selected by the applicant).

The international preliminary examination report is prepared after one or more written opinions and possibly other communications with the International Preliminary Examining Authority.

If the international application does not meet the unity of invention requirement, the International Preliminary Examining Authority will require you to pay additional fees or restrict the scope of the claims. If the applicant does not comply with this request, an international preliminary examination report will be prepared for the portion of the international application that relates to the invention that is recognized as the main invention (Article 34(3)(a) of the Convention).

The criteria for determining unity, novelty, and inventive step in the international preliminary examination are the same as those in the international search.

 

Advantages of taking an international preliminary examination

・New position paper
The international preliminary examination report provides applicants with a more advanced opinion than the written opinion of the International Searching Authority, allowing them to make a better decision as to whether or not to proceed to the national phase of the selected country.

·correction
Amendments to the claims, description, and drawings (Article 34 amendment) can be made (Article 34(2)(b) of the Convention). In addition, you will have the opportunity to submit a reply to the written opinion of the International Searching Authority (Article 34(2)(d) of the Convention). At this time, the applicant may have an interview or other interaction with the examiner of the International Preliminary Examining Authority, allowing the applicant to accurately express his or her opinion to the examiner (Rule 66.6).

・International preliminary examination report
An applicant can obtain an international preliminary examination report affirming patentability by submitting a written reply or making amendments to the written opinion.

·Others
Although the international preliminary examination report is not binding, emerging countries in particular tend to place importance on the results of international searches and international preliminary examinations, so it is important to obtain an international preliminary examination report that affirms patentability. This increases the possibility of obtaining rights after entering the national phase.

 


<Contents within the page>

PCT Support Office Procedures for PCT international applications International search/international preliminary examination Glossary Fees for PCT international applications
<Related page>
Foreign/Intellectual Property Translation Foreign Support Office Latest foreign information Information on emerging countries, etc. PCT Support Office

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