Posts Tagged: "PCT application"

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document… The Federal Circuit affirmed. The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.

Patenting activities in the quantum computing sector have rapidly increased in recent years, with the U.S. by far the preferred jurisdiction for applicants… One interesting finding from the Patinformatics report is that, although Northrop Grumman doesn’t have the largest portfolio in the field, it is well-situated to compete with the biggest players. “One of our main assertions is that, if there’s an organization interested in being competitive with IBM, they may want to contemplate a partnership or acquisition of Northrop Grumman,” Trippe said. Both Northrop and IBM have made significant investments into super-conducting loop qubit technologies and Northrop actually edges IBM in logic gate hardware.

The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical problem, this could be a sign that either the supposed invention is non-technical, or the contribution over the state of the art is non-technical. In Europe, non technical inventions are excluded much in the same way as abstract ideas are deemed non-patent eligible in the US. Inventions that make no technical contribution are refused for obviousness. The EPC and the subsequent case law do not have a precise definition of what is technical (non-abstract) and non-technical (abstract). Nevertheless there is a growing body of case law on inventions which involve a mix of technical features and non technical features and that are refused for lack of inventive step because the non-technical features are disregarded.

A PCT application is an international application that is filed under the Patent Cooperation Treaty (PCT), which currently has 151 contracting states. A PCT application is filed with an appropriate Receiving Office within 12 months from the date of first filing (where applicable). The main advantage of a PCT application is that an applicant generally gets 30/31 months from the date of first filing to file individual National Phase applications in jurisdictions of interest. However, one must consider the costs associated with the PCT Process.

In several jurisdictions across the globe, the costs are a function of various variables such as the mode of filing, the type of applicant, the number of pages of the specification and claims, and the number of claims/independent claims/multiple dependent claims. The costs generally have three components (official, associate/attorney, and translation) that are spread across the different stages of the patenting process (filing, examination and prosecution, grant, and maintenance or renewal or annuity). For instance, let us consider a PCT application filed by a large entity comprising 50 pages (including 5 pages of drawings and 10 pages of claims) and 20 claims (including 3 independent claims) which is to be electronically filed in the top 10 jurisdictions, namely Canada (CA), China (CN), European Patent Office (EP), Israel (IL), India (IN), Iran (IR), Japan (JP), South Korea (KR), Russia (RU), and the United States (US)

For better or for worse, there is no such thing as a world-wide patent. There is, however, something that approximates a world-wide patent application that can ultimately result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

According to WIPO data, USPTO, EPO and KIPO are major ISAs for U.S. applicants; about 94% of intentional searches have been done by these three patent offices. U.S. applicants may consider the quality of search reports and cost of search fees as the most important factors in selecting an ISA. Search fees vary by ISA, for example, EPO’s rate is relatively high $2,125, USPTO’s rate is $2,080, and KIPO is well known to provide high quality earches with a relevantly competitive cost at $1,219.