JOHO supports the World Patent Application.
The PCT is an international treaty adhered to by approximately 114 countries, known as contracting states, that facilitates the filing of applications for patents on the same invention in more than one country. Under the PCT, as administered by the World Intellectual Property Organization (WIPO), an applicant can initiate patent protection procedures in a multitude of countries by filing a single PCT application, commonly referred to as an international application. The PCT also allows for the claiming of Convention priority, where the first application may be filed in one country or region, followed by the filing of a PCT application within one year of the first application which claims priority to all PCT contracting states.
While PCT does not result in an international patent, compared to the conventional Paris Convention commonly used for international patent application, a PCT application, allows the applicant to defer filing national and regional applications for up to 30 months from the priority date, as well as the opportunity to obtain a patent office opinion on patentability and address some initial prosecution issues. Consequently, by filing a PCT application the applicant may have a better chance to ascertain the patentability and profitability of their invention and therefore make a more informed decision regarding the merits of filing internationally.
JOHO Patent Support furthers extends the benefit of PCT by assisting the client with all phases of national and regional phasing, including expert translation, drafting and finalizing of necessary documents and utilizing the services of local patent attorneys at a reasonable cost through our international network of professional staff members with expertise in virtually every field of intellectual property.
JOHO Foreign Patent Application Service is composed of staff members that are experienced in foreign patent applications along with translators and proofreaders that will provide accurate translations in conjunction with local patent agents and attorneys that will coordinate the submission of prerequisite forms and translation documents on behalf of our clients. In comparison to utilizing local patent agents or attorneys, we can provide foreign patent applications at a reasonable cost without any unnecessary burden in terms of paper works to our clients.
Currently we handle foreign patent application that has undergone publication of international application through PCT (Patent Cooperation Treaty). While PCT is useful for application for one foreign country, we recommend taking advantage of the merit of PCT in terms of cost benefit for foreign applications of over three countries due to the unique nature of PCT.
The Trend and Cost of Foreign Patent Applications
In the era of internationalized pro-patent, combined with the increasing necessity of applying for patents at emerging countries, it is now critical that one invention be patented at designated nations in many parts of the world.The Japanese corporations, for example, have recently expanded their conventional patent applications to U.S. and European nations and now expanded their patent protection to the Asian and South American countries as well.
Obviously the expanded protection at various nations necessitates increased expenditure.The conventional means of obtaining worldwide patent protection utilized the Paris Patent Treaty that necessitated the localized patent applications at each designated countries.This required significant amount of the paper work as well as the exorbitant cost that kept even multinational corporations from applying in countries that they felt necessary. The above issues lead to the enactment of PCT (Patent Cooperation Treaty).
Basic Facts About PCT
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and 2001.The following is a brief outline of the benefits of PCT: (A significant amount of important information is available on the PCT website:www.wipo.int/pct/en/. )
1) The First Step: International Patent Application: One is entitled to file an international patent application if your are a national or resident of one of the PCT Contracting States at onefs national (or regional) Patent Office which will act as a PCT greceiving Officeh. As of April 1, 2002, there are a total of 115 nations that are contracting states to the PCT.
2) Delaying of the Procedure before the national or regional Offices: Once an international patent application has been filed, the national procedures are delayed until the end of the 30 months from the priority date (with certain exceptions).This delay normally gives an applicant 18 more months more before you have to fulfill the national requirements than if you do not use the PCT.This additional time can be very useful for evaluating the chances of obtaining patents and of exploiting onefs invention commercially in various designated countries and for assessing both the technical value of your invention as well as the continued need for protection in those countries;
3) Evaluation Opportunities: In making such evaluation, one has the benefit of the international search report and if so requested, also the international preliminary examination report;
4) International Search: International patent application are subjected to an ginternational searchh by an International Search Authority, which consists of a high quality search of he patent documents and the other technical literature in those languages in which most patent applications are filed (i.e. English, French, German, and certain cases, Chinese, Japanese, Russian and Spanish), conducted by experienced patent Offices specially appointed to carry our International Searches.The following are the International Searching Offices: the national Offices of Australia, Austria, China, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden and the U.S., and the European Patent Office.The publication of the international application, along with the international search report, is communicated to each Designated Office shortly after 18 months from the priority date.
5) International Preliminary Examination (Optional): One has the option, upon payment of relevant fees, to have an international preliminary examination of your application, carried out by the Patent Offices mentioned above with the exception of the national Office of Spain.The preliminary examination is made, on the basis of international search report, according to the internationally accepted criteria for patentability (novelty, inventive step and industrial applicability).The applicant has the opportunity to submit amendments and arguments during this phase.The effect of this report provides the applicant with an even stronger basis on which to evaluate the chances of obtaining patents, and, if the report if favorable, a stronger basis on which to prosecute the application before the national or regional Offices.The international preliminary examination report is authoritative but not binding; however, it provides the applicant with more information as to the patentability of onefs invention during the national (or regional) phase.
6) Internationalized Standardization:The international application has the effect of a national (or regional for nations party to various regional patent treaty) patent application in those PCT Contracting States which one has gdesignatedh in onefs application;
a) Since an international patent application must be prepared in accordance with the international standards effective in all of the PCT Contracting States, subsequent adaptation to varying national (or regional) formal requirement and the cost associated therewith will not be necessary.
b) Because an international patent application is effective in all designated PCT Contracting States, one only needs to pay a single set of fees for the application that covers the filing, searching and publication of the international patent application.National fees are payable much later because national processing is delayed through the use of PCT.Often, national fees are also lower for international patent applications than they would be if direct national applications had been filed.
c) Until international publication (18 months after the priority date), no third party is allowed access to your international patent application unless without the applicantfs specific consent.
7) National (or Regional) Phase:
The substantive examination of onefs international patent application through the use of PCT before the designated countriesf national and regional Offices is made easier by the international search, and facilitated even more by the international preliminary examination which enables one to make necessary amendments to onefs patent claim even before the national or regional procedure starts.PCT allows the applicant with sufficient knowledge of whether to proceed with the national phase which must be taken before the end of the 30th month from the priority date.
8) JOHO Support at during the National or Regional Application Process
? Once the decision has been made to submit applications to the national or regional patent offices, JOHO will assist our clients with the filing of the necessary documents as well as the certified translation of the priority documents in with our experienced patent attorneys, staff members and professional translators in conjunction with our affiliation with local patent agents and attorneys worldwide.Compared to conventional Paris Convention application, the international search and preliminary examination report of PCT allow the applicant with the prerequisite knowledge and preparation contributing to the successful attainment of patent protection at each designated countries.In addition, since the international processing is not repeated before each designated Office and the application already completed its international publication, we provide our client with a smooth national (or regional) phasing at a very reasonable cost.Needless to say, the benefit of PCT lies in its application to numerous countries, which JOHO can assist the entire process promptly with precision.Ordering
- The client notifies us of the initial PCT application country, the language, the date of application, the content of application and the designated foreign countries and the time frame that the client wishes to proceed his national or regional phasing.
- Upon receipt of the above information, we will coordinate the entire project based upon the necessary documents to translated as well as other relevant documents to be filed, contact several prospective local patent attorneys that suit the clientfs need and issue a schedule, profile of the prospective patent attorneys and an estimate to the client.
- Upon execution of our retainer form and payment of fees (see below) by the client, we will then proceed with the correspondence with the most suitable with the local patent attorney and make necessary preparations for filing at each designated countries or region.
- Concurrently, we will proceed with the translation utilizing our most qualified staff members with expertise in the particular field in which the patent application pertains to along with proofreading by native translators.
- The necessary filing documents, including the translated documents, will be prepared and reviewed by our staff members as well as by the client. As our office will conduct the bulk of the necessary work for filing, the actual cost incurred by our local patent attorney is minimized. Upon confirmation, the documents will be sent to our local patent attorney(s) for final checking.
- The documents will be finalized and filed with the relevant patent ministries.
Price List
Drafting, Finalizing and Submission of Translated Documents and Other Relevant Documents:
First Designated Country: 170000JPY.
Per Additional Designated Country: 50000JPY.
Translation Fee:
Please refer to our Patent Translation Price List
Fees for Local Patent Attorney:
The cost for the fee for the services for local patent attorney varies according to each patent application. However, as a general guideline, assuming the number of claims to be three and the total number of pertinent files to be approximately 40 pages, the following is a general estimate of the fees:
Korea, Italy, Spain, Portugal, Brazil, Argentina, India: 180000JPY ~ 230000JPY. Germany, France, Russia: 250000JPY ~ 300000JPY. Sweden, Norway, Denmark, Finland: 300000JPY ~ 350000JPY.
EPC (European Patent Cooperation Treaty): For countries under the jurisdiction under the EPC (Germany, Switzerland, U.K., France, Luxembourg, Sweden, Denmark, Netherland, Finland, Belgium, Italy, Spain, Turkey, among other EC countries), we recommend the EPC Patent Application.
Addition Expenses :
There are additional expenses for actual costs incurred for filing fees, communications and mailing expenses, international funds transfer costs, typing (if required) and graph creation
After Filing Cost :
Third Party Claim Response: The cost of resolving third party claims depend upon whether the client wishes to utilize the assistant of the local local patent attorney in filing the prerequisite responsive and amendment documents.
Annual Maintenance Cost: 8000JPY per year per designated country (excludes cost local patent attorney and PCT related fees).
Joho Corp.
2-9-6 Hyakuninchou 4th Flr.
Shinjuku-ku, Tokyo 169-0073
Japan
Translation Manager : Yamagata
Please call "JOHO" at +81-3-3366-1189 You can cntact us in English.
at 9:30AM - 6:00PM Japan time
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| Matter1056523 Feb 22,2005 | Patent dissemination entrepreneur list |
