Domestic and International Patents, Trademarks, and IP Strategy
EPC Rule 36:
(1) The applicant may file a divisional application relating to any pending earlier European patent application.
(2) A divisional application shall be in the language of the proceedings for the earlier application and shall be filed with the European Patent Office in Munich, The Hague or Berlin.
For substitute drawings and other corrections see PCT Rule 26.4:
A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.
The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries (source: USPTO Inventor Resources).
PCT Links:
WIPO PCT Resources
About the PCT
PCT Articles (html, pdf)
PCT Rules (html, pdf)
PCT Treaty, Regulations, and Administrative Instructions
General FAQs on Patents from WIPO
PCT Applicant’s Guide
Types of Protection Available via the PCT in PCT Contracting States
WIPO Standard Two Letter Country Codes
Time Limits for Entering National/Regional Phase under PCT Chapters I and II
Effects of modification of PCT Article 22(1) time limit
PCT Contracting States for which a Regional Patent can be Obtained via the PCT
PCT Fee Tables by Countries/Offices
PCT Fees in US Dollars
Official Notices (PCT Gazette) Collection
PCT Newsletter
PCT Time Limit Calculator
USPTO PCT Office including Forms, Fees, and Information
European Patent Office (EPO)
Filing an application in the EPO
MPEP Chapter 1800 Patent Cooperation Treaty (html, pdf)
Searching:
PatentScope Search – International Patent Applications Search
esp@cenet – EP and WIPO Patent Search
Phone Numbers:
The USPTO PCT Help Desk, which provides information and assistance on the PCT process, may be reached by telephone at (571) 272-4300 between the hours of 9:00 am and 4:30 pm (EST/EDT), Monday through Friday or by facsimile (FAX) at (571) 273-0419 twenty-four hours a day.
There are four basic requirements for patentability under the European Patent Convention (EPC): 1) there must be an “invention”; 2) the invention must be “susceptible of industrial application”; 3) the invention must be “new”; and 4) the invention must involve an “inventive step” (Article 52).
Many people who have confidence in their knowledge of U.S. patent law run into problems when applying for European patents because they disclose their invention before filing either a U.S. or European patent application. While this may be acceptable (with certain limitations) in the U.S., it can create insurmountable problems in many other countries.
In order to understand why, you must understand the third requirement of patentability under the EPC – the “new” requirement.
A list of two-letter codes accepted for use in indicating States, other entities, and intergovernmental organizations in documents relating to international applications under the PCT. The list is part of WIPO Standard ST.3.
Links: USPTO List of Country Codes, PCT Applicant’s Guide.
A record 409,532 patent applications were filed, and 165,485 patents were issued in 2005 according to the United States Patent and Trademark Office (USPTO) Annual Report. Compared to 2004, this represents an 8.1% increase in filings, and an 11.6% decrease in issued patents (chart).
Expect to wait over two years for your patent to issue as the average total pendency (the time from when an application is filed until it is issued or abandoned by the applicant) was 29.1 months (in 2004 it was 27.6 months).
California led all other states with 48,568 patent applications filed, followed by Texas with 12,951, and then New York with 12,521 applications.
More than four out of every ten patent applications were filed by residents of foreign countries, 184,380 in total. Japan led all other countries with 65,025 applications, more than three times as many as the next two countries, Germany (18,245) and Taiwan (16,865).
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An international application must be an application for the protection of an invention. The PCT encompasses the filing of applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates of addition. An international application thus cannot validly be filed for certain other forms of industrial property rights which fall outside the scope of “inventions”, such as, for example, purely ornamental designs. (PCT Articles 2(i), 2(ii), 3(1); PCT Applicants Guide Vol. I)
