PCT route, international patents and the EP application authority

[Ucindami Mafeni]

Hello,

I am a bit confused about how the PCT route and international patents relate, and how to intepret applications to the EP in the patstat data.

1) From my understanding, an application throug the PCT route imply the application is "valid in all Contracting States of the PCT". Who does the applicant send the application to if they want to pursue this route? The EP or the regional/national office (in the patstat dataset, does this correspond to the application authority)?

2) Also, if an application made by the PCT route is accepted, does it mean that the patent is enforced in all PCT member countries? If this is indeed the case, then I am not sure how the international patent is any different from an application made through the PCT route.

3) relating back to question 1, I am unsure about how to interpret applications made to the EP. There are instances in the dataset where the application is made to the EP (i.e. the EP is the application authority) and can be connected to other applications made to individual country offices through the inpadoc family code variable. How do I interpret this? Is it that applications must first be made to the EP before they are made to individual countries in Europe?

4) If the answer to the aformetioned question is "yes" then how do I interpret applications made to the EP alone which seem to have no other national applications related back to it through the inpadoc family code? Where would applications made to the EP alone, if the said applications are successful, be valid? And again, how does this relate to international patents?

I apologise if my questions seem somewhat schizophrenic. But as said earlier, the key confusion stems from the fact that I do not understand what the difference between the PCT route and international applications, and I do not know how to interpret applications to the EP (applications where the application authority is the EP).

Many Thanks

[EPO / PATSTAT Support]

Hello Ucindami,
your questions are rather related to the patent application & granting procedure.
A good introduction to the general rules for EP and PCT (international) applications are the "Guide for applicants", which you can find at this link: http://documents.epo.org/projects/babyl ... 019_en.pdf and here: http://documents.epo.org/projects/babyl ... 019_en.pdf

About your questions: my answers are general, looked at it from a "patent information - PATSTAT" point of view, and should not be considered as comprehensive legal advice.
1) A PCT application is ONLY a filing (& search & examining) route, PCT applications do not get granted as international applications. In principle, an applicant could obtain just the same protection by applying for a patent in the different countries. The granting procedure starts when the PCT applications enters the national phase. PCT applications list so called "designated countries" where the applicant intends to continue the granting procedure in order to get a "granted patent". The main advantage of a PCT filing is that the applicant does not have to start filing patents in multiple countries from day one. (And it also safes various costs.) The PCT procedure also "buys time" to decide where to continue with the procedure. PCT applications are filed with the so called "receiving office". You will find the "receiving office" data as an attribute in the TLS201 table. The European patent office is an "Application authority" as well as a PCT "Receiving Office". All PCT applications have Application Authority = 'WO' (starting from PATSTAT 2018 Spring edition). And the receiving office based at the WIPO is called the "International Burea
2) The PCT application is the so called "PCT route". "PCT route" is also used to describe the EP applications that originate from an earlier PCT filing. A PCT application establishes a filing date for that patent in the respective designated states. It is not a "granted patent" that can be enforced.
3) an EP application can be granted, after which the granted EP (can) enter the *national phase". Some countries "re-publish" this "granted patent", and it will then become member of the same family.
The family members can be EP member states as well as other states (or authorities). Typical examples are earlier priority filing(s) in an EP member state, or the "national phase" of a PCT application (US, JP, KR, CN,...).
4) EP applications without other family members can still be "pending" (not granted), or they can be withdrawn as well ("dead"). Family members will (might) join when other publications become available. Granted EP applications can only be validated in the EPO member states.

[Ucindami Mafeni]

Hello again,

I wanted to disaggregate regional applications (i.e. those made to the EP or EA) so that I can identify the individual countries in which a particular application is enforced. I have disaggregated applications made to the EP and EA by, using TLS201 as the starting dataset:
1) merging the corresponding application ID's to TLS231
2) restricting the sample to applications in the regional and not the national phase
3) merging this combined dataset to TLS803 using application authority and legal event code as merging variables
4) Restricting the sample to observations with a non-regional application authority and with a positive event impact (i.e. those with event_impact="+").

Does this seem like a suitable strategy, or are there better ways to disaggaregate applications made to the EP/EA so I can know which individual countries the application is enforced in?

[EPO / PATSTAT Support]

If by "enforced" you mean "still valid", then you should look at the PGFP codes in combination with the year of payment in order to know if the current (and/or last) year is still covered. Some member states use special national codes to indicate the patent has lapsed. A thorough "validity analysis" requires in-depth knowledge of the legal status codes and the national patent law. There is no single indicator to identify that patent EP XYZ is valid for country ABC. A payment of a renewal fee is used as proxy.

For EA: you will need to look at the relevant legal status codes for EA.
This query lists all legal event codes for granted EA patents.

Code: Select all

SELECT distinct appln_auth,tls803_legal_event_code.*
FROM tls201_appln
	JOIN tls231_inpadoc_legal_event on tls201_appln.appln_id = tls231_inpadoc_legal_event.appln_id
	join tls803_legal_event_code on tls231_inpadoc_legal_event.event_auth = tls803_legal_event_code.event_auth 
	and tls231_inpadoc_legal_event.event_code = tls803_legal_event_code.event_code
where appln_auth ='EA' and granted ='Y'
order by event_code

Table TLS803 only serves to provide some extra information on the legal event codes. The "categories" is EPOs' interpretation of WIPO ST27 standard.
The +/- signs is a rather subjective indication of positive and negative events (from the point of view of the patent owner/applicant.)
Also: to have a good understanding on which legal event codes might be relevant for your analysis (coverage), have a look at the excel sheet at this forum topic:
mapping-data-completeness-inpadoc-legal ... s231-8681