Almost every aspect of the patent application is littered with TLAs (three-letter acronyms) – even the title of this post contains one!
Patent attorneys, as well as others who deal with patents a lot, tend to use TLAs as a convenient shorthand, but forget that many clients do not understand what they actually mean!
This post lists and explains the meaning of the most frequently-encountered TLAs in the PCT procedure, and is set out (roughly!) in chronological order.
PCT (Patent Cooperation Treaty)
This is a multilateral treaty signed up to by 152 PCT contracting states. It is the the legal framework that sets out the “international” patent application system, whereby a single patent application can be made to a central body. Once filed, the PCT provides that the PCT application is equivalent to having filed a national/regional patent application in all of the contracting states.
If you are not sure where you need to obtain patent protection for your invention, the filing of a PCT application keeps your options open. Also, the PCT system keeps an application alive for 30 or 31 months (depending on the country) from its filing or priority date. This is much longer than the 12-month priority period provided by the Paris Convention, and so defers the point at which a decision needs to be taken about if/where to file overseas.
A PCT application is only ever an application: there is no provision in the PCT for the granting of patents. Granting of patents is done by the national/regional patent offices, following national/regional examination, once the PCT application has been converted into one or more national/regional applications in the national phase.
There are two basic stages, therefore: the “international phase”, which is overseen by WIPO (see below), where the application is filed, searched, and optionally examined; and the “national phase”, which follows on from the international phase, where the application is examined and granted as a patent – if it meets the national requirements.
The two-stage procedure is necessary because the patent laws of all 152 contracting states are not exactly the same. So, whilst the overarching idea that an invention must be new, non-obvious, and industrially applicable to be patentable applies in all PCT contracting states, different national/regional patent offices may apply different rules/criteria when assessing whether these conditions are met.
IR (Implementing Regulations)
This is set of rules that apply to the PCT treaty itself. The PCT is agreed by the legislative bodies (e.g. governments) of the contracting states, but the Rules are set by WIPO (see below). The rules relate to procedural matters, such as fees, forms and time limits.
For example, Article 3(4)(ii) of the PCT says: “…The international application shall comply with the prescribed physical requirements…”, and the corresponding Rule (Rule 11 PCT) specifies those physical requirements, i.e. paper size, margins, typeface sizes, page numbering, drawing format, etc..
The two-tier system (of 1) the PCT; and 2) the Implementing Regulations) enables the procedures, fees etc. to be updates and kept in-line with practical considerations without having to involve the governments of 152 countries!
In addition to this, there are the PCT Guidelines, which provide useful commentary on how, in practice, the PCT and Implementing Regulations implemented. They also provide comprehensive, and very useful guidance for applicants.
WIPO (World Intellectual Property Organisation)
This is the body that oversees the PCT procedure. It is based in Geneva. WIPO can receive PCT applications (i.e. you can file a PCT application directly at WIPO) and also carries out certain administrative functions (such as processing requests for restoration, obtaining electronic copies of priority documents, issuing certain procedural forms).
RO (Receiving Office)
This is the patent office at whcih the PCT application is actually filed, and to which the initial PCT fees need to be paid. The choice of RO that the applicant selects depends on the nationality and residence of the applicant, inventor and/or professional representative. For example, UK applicants can opt to use the UK Patent Office (UKIPO), the European Patent Office (EPO), or the International Bureau (IB – see below), when filing a PCT application.
Correspondence and forms issued by the RO are prefixed with “RO”, e.g. PCT/RO/102, which is a PCT form, issued by the Receiving Office. The 102 code, incidentally, refers to notifying the payment of fees.
IB (International Bureau)
The IB is basically another name for WIPO. When dealing with central matters concerning a PCT application (such as a change of applicant), this is dealt with centrally by WIPO, acting in its capacity as the IB.
Correspondence and forms issued by the International Bureau are prefixed with “IB”, e.g. PCT/IB/304, which is a PCT form, issued by the IB, notifying the receipt of a priority document (the “304” code).
ISA (International Searching Authority)
This is the patent office that has been nominated by the applicant to carry out a search of the invention described in a PCT application. The applicant can choose which ISA it wants to use, but there are certain restrictions. For example, a PCT application filed at the UKIPO can only be searched by the EPO. The choice of ISA can be important as it can have cost consequences later on (for example, if the EPO is the ISA, then the EPO does not charge a search fee again if the PCT application is later converted into a European patent application).
ISR (International Search Report)
This is the Search Report drawn-up by the ISA. It contains a list of prior art (earlier publications), which may be relevant to the novelty and/or inventiveness of the claims of the PCT application. Whether or not the invention is patentable will be judged against how the claimed invention differs from the information disclosed in the prior art.
WOISA (Written Opinion of the International Searching Authority)
This is a report, which is usually appended to the ISR. It explains why the ISA believes that the prior art mentioned in the ISR is relevant to the claims, and also sets out other objections to the application, which may be prejudicial, in the national/regional phase later on, to the granting of a patent.
IPEA (International Preliminary Examining Authority)
This is the patent office that has been nominated by the applicant to carry out a non-binding examination of the PCT application. The applicant can choose which IPEA it wants to use, but there (again) are certain restrictions. For example, a PCT application filed at the UKIPO can only be examined by the EPO.
Again, the choice of IPEA can be important because it can have cost implications later on (for example, if the EPO is the IPEA, then the EPO reduces its examination fee by 50% if the PCT application is later converted into a European patent application).
IPER (International Preliminary Examination Report)
This is a formal examination report drawn-up the by the nominated IPEA. It sets out any objections that the IPEA has to the application, such as a lack of novelty, inventive step, non-unity, lack of clarity etc.
If there are no objections, and the IPEA considers that the application, in principle, relates to patentable subject matter, then a “favourable” Examination Report will be issued. No response is usually required to a favourable IPER.
If, on the other hand, there are objections , then the IPEA will issue a “negative” or “partially-favourable” Examination Report, to which the applicant may respond with further arguments and/or further amendments within a certain time limit (usually 1 or 2 months). If the dialogue between the applicant and the Examiner overcomes all of the objections – before the international phase runs out – then a “favourable” Examination Report can be issued.
IPRP (International Preliminary Report on Patentability)
If the international application only underwent a search (and not examination), then the IPRP is simply a document that combines the ISR (see above) and the WOISA (see above).
If the international application was examined as well, then the IPRP is a document containing the ISR and the most recent IPER (see above).
The IPRP is basically the starting point for examination of the application in the national/regional phase, but due to the non-binding nature of the IPRP, the national patent offices are free to use or disregard its findings as they see fit. In practice, however, IPRPs drawn-up by the EPO are generally accepted by the EPO at face value during the EPO regional phase; and there seems to be a general pattern between certain IPEA-national patent office pairs, of broadly, if not completely, accepting the findings of the IPRP.
So, there you have it – a whistle-stop run-down of the most frequently-encountered PCT TLAs.
If you want to find out more about the PCT, you can do so on WIPO’s web site, and the PCT applicant’s guide is a pretty comprehensive resource. Also, if you are particularity geeky, and want to decode the PCT form codes, then this can be done here!