Conditions d'obtention des brevets - Conditions for obtaining a patent - Voraussetzungen für die Erteilung von Patenten

International PCT applications

Patent Cooperation Treaty (PCT) There currently is no “international patent”. The Patent Cooperation Treaty (PCT) has however instituted an international application which produces in each of the designated states the same effects as a national application. The PCT has been ratified by 151 Member States (status December 2016) including most of the industrialized countries. It is thus possible to file a single international application, in one language, to replace over hundred national applications. The list of Member States is available for instance on the site of the World Intellectual Property Organization (WIPO) under http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva (Switzerland). The grant procedure however involves the collaboration of different patent offices, in various capacities and depending notably on the applicant ‘s nationality or domicile.
European Patent Application - Brevets Européens - Europäisches Patent

Patentability analysis
When an invention is presented to us, we begin by checking its novelty through a patentability study. The aim of this analysis is to determine precisely the prior art closest to the invention. After completion of this study, a report is issued that contains a list of patents and articles published by other parties and capable of challenging the invention’s patentability, as well as advice as to suitable protection. The costs of the patentability analysis are invoiced according to a price agreed in advance, often around CHF 3’500 for an invention of average complexity.
Around 40 percent of all inventions that are submitted to us are abandoned after completion of the patentability analysis, when the inventors realize that the prospects for protection do not justify the costs nor the efforts. In this case, the patentability analysis allows the applicant to make substantial cost savings by avoiding the filing of a superfluous application.
In the case where the procedure is followed by the drafting of a patent application, the patentability analysis makes it possible to check which characteristics, in a project containing several innovative aspects, can be protected efficiently, and to optimize the drafting of the application to clearly emphasize the differences between the new invention and the documents discovered.
The patentability analysis is also accompanied by one or several suggestions on the strategies for protecting the invention, taking into account the invention’s commercial prospects, the discovered prior art and the applicant’s budget. In most situations, the strategy begins with the initial filing of a Swiss, European, international (PCT) or provisional (without payment of fees) patent application or of a defensive publication. A patentability analysis can be ordered by means of the downloadable attached form.
Dépôt d'une demande de brevet

filing international applications with the receiving office

International applications can be filed, in writing or by fax, at the applicant ‘s choice:

  • with the national patent office of the PCT member state of which the applicant is a citizen or in which he has his domicile or head office,
  • with an office acting on behalf of this state, e.g. with the European Patent Office (EPO) for nationals and residents of member states,
  • or with the International Bureau in Geneva. The fees can vary slightly according to the chosen receiving office.
The Receiving Office is responsible notably of the formalities examination. It allocates the filing date and number to the application and is in charge of collecting the different fees due at filing.

International Search Report Once the formal examination has been completed, the Receiving Office transmits a copy of the international application to WIPO as well as a second copy to the International Search Authority (ISA). The EPO is the only ISA possible for Swiss applicants. The principal role of the ISA is to establish the international search report. This report is usually available within three months as from the time when the EPO receives the application or nine months as from the oldest priority if this deadline expires later. The international search report consists essentially in a list of documents which the search examiner considers relevant for assessing the novelty and inventiveness of the application as claimed. The cited documents can include other prior patents but also any other type of publication, e.g. newspaper articles, conference minutes, copies of Internet pages etc. The report itself indicates the most important portions from these documents as well as the relevance of each citation, indicated by means of a letter. Documents marked “X” are deemed to pose on their own a challenge to the novelty or inventiveness of the indicated claims. Documents marked “Y ” must be combined to allow the inventiveness of a claim to be contested. The documents marked “A” are cited merely as technological background. Other types of citations are more anecdotal.

The search reports issued for international applications filed after January 1st, 2004, are accompanied by a written opinion containing the non-binding findings of the ISA as to the patentability of the invention. This written opinion is issued even without any international preliminary examination request being filed. It is not published with the international application and is not available to public inspection before expiration of a 30 months’ term from the priority date.

Search report

The application is then transferred to the searching authority that is in charge of establishing a search report. The EPO usually strives to issue the search report within 9 months after filing if the application does not claim any priority; this deadline is however also frequently of several years if the European application is not the first filing for this invention.

The search report contains a list of documents uncovered by the search examiner and which are judged relevant to assess the novelty and the inventiveness of the application. The cited documents are attached to the report.

A letter against each document indicates its relevance. The most important codes are “X”, used to designate a document which on its own is considered to pose a challenge to the novelty or inventiveness of a claim of the application, and “Y”, which designates documents which, together and in combination with one another, allow the inventiveness of a claim to be contested. The letter “A” designates documents cited as technological background.

The aim of the search report is only to establish the patentability of the claimed invention, but not to assess whether it can be used freely without infringing upon existing patents. An older patent, comprising claims sufficiently broad to be infringed by the invention, but that does not describe the new claimed characteristic, will not necessarily be cited even though the applicant would obviously be interested in this patent being brought to his attention. The search report also does not indicate whether the cited patents are still in force.

The search report for European applications not claiming priority is accompanied by an opinion on patentability. The applicant does not need to respond immediately. In the absence of a response, this opinion is generally taken over as first office action during the examination procedure.

Unity of invention

The ISA (International Search Authority) can in certain cases raise objections as to the unity of invention of the patent application (PCT Rule 13). The unity of invention can be contested when the application concerns several inventions that are not linked with one another so as to form a common inventive concept. In such a case, the applicant is invited to pay additional fees, failing which the search report will be established only on the basis of the first claimed invention. It is also possible to pay the additional fees under protest, i.e. with written objections against the statement that the invention lacks unity.

international publication

The international application under PCT is published by the WIPO International Bureau eighteen months after the earliest priority or filing date.

The application is generally published together with the search report if it is already available (publication A1), otherwise it will be published separately at a later stage (publication A3). The publication number of international applications always begins with the letters WO (WOrld) followed by the year of publication in two or four digit format.

Beware of approaches and requests for payment

It has come to the attention of P&TS that more and more clients are receiving invitations to pay fees that do not come from P&TS or WIPO/EPO and are unrelated to the processing of european or international applications under the EPC or PCT. Whatever registration services might be offered in such invitations, they are not issued by P&TS and bear no connection to WIPO/EPO or to any of their official publications.

These invitations to pay fees often identify a particular PCT application by its international publication number (eg: WO 02 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols; examples of such invitations can be viewed below. It is highly recommended not to pay them.

You may find some examples on following WIPOs website :http://www.wipo.int/pct/en/warning/pct_warning.html
examen du brevet, notifications

International preliminary examination report (IPER)

The entry in the national and regional stage entails considerable costs for the applicant if many countries are designated. In order to postpone these costs, the applicant has the possibility of filing a request for preliminary examination, whose main effect is to defer by 10 months the deadline for the entry in the national or regional phase. The request must be filed by means of a form prescribed for this purpose.

It must be noted that since 2002, only a small number of states request the preliminary examination for postponing the deadline for the entry in the national or regional phase; most states have abandoned this requirement. When a request for international examination has been presented, the application is transferred to the International Preliminary Examination Authority (IPEA). For Swiss applicants, this authority is also the European Patent Office. The IPEA then issues one or several written opinions stating its observations and remarks as to the patentability of the invention. The applicant has the possibility of answering these observations by adapting the claims and/or the description of the patent application. It must be noted however that the owner is under no obligation at this stage to respond to the IPEA’s written opinions; this authority is not competent for rejecting the application, even if it suffers from considerable defects. Most of the applicants however take advantage of this opportunity for putting the application in order in a centralized manner, in order to avoid having to respond later many times to similar objections raised during the course of the national or regional stage in the different elected states. The IPEA then issues an international preliminary examination report (IPER) comprising an opinion as to the application’s patentability. This report is communicated to all the elected states and will generally influence their decision to grant or refuse a patent. The IPER must be completed by 29 months after the priority or filing date.
For international applications filed after January 1st, 2004, a written opinion has already been issued by the ISA during phase 1 of the PCT. This written opinion generally constitutes the basis of the IPEA’s first opinion. However, unlike the procedure under chapter I, the applicant is given the opportunity to reply to this written opinion and the IPEA can issue additional written opinions before the international preliminary examination report itself.

Office actions

In the event that a request for examination has been filed, the IPEA examines the international application taking into account amendments and arguments filed following the international search report. If the application still displays irregularities, e.g. lack of clarity or if the claims lack novelty or inventive step over the prior art, the authority then sends one or several written opinions observations and comments as to the patentability of the invention. The applicant has the opportunity to answer these observations by adapting the claims and/or the description of the patent application. It must be noted however that the owner is under no obligation at this stage to respond to the IPEA’s written opinions; this authority is not competent for rejecting the application, even if it suffers from considerable defects. Most of the applicants however take advantage of this opportunity for putting the application in order in a centralized manner, in order to avoid having to respond later many times to similar objections raised during the course of the national or regional stage in the different elected states.

The IPEA then issues an international preliminary examination report (IPER) under Chapter II comprising an opinion as to the application’s patentability. This report is communicated to all the elected states and will generally influence their decision to grant or refuse a patent. The IPER must be completed by 29 months after the priority or filing date.

entry in the national phase in the designated States

The applicant has the possibility, up to the 30th month after the priority or filing date, of proceeding with the formalities for the entry in the national or regional phase in the different designated states. These formalities comprise, in most states, the payment of a fee usually equal to the filing fee of a national application and sometimes of an additional search and/or examination fee. Most states further require a translation of the application in one of their national languages as well as the appointment of a local representative.

The procedure is then pursued separately in each state, and the different patent offices will issue office actions independently and are free to decide whether a patent deserve to be granted.

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