Patent Cooperation Treaty (PCT)
Summary of the Patent Cooperation Treaty (PCT) (1970)
The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State. It may generally be filed with the national patent office of the contracting State of which the applicant is a national or resident or, at the applicant’s option, with the International Bureau of WIPO in Geneva.
If the applicant is a national or resident of a contracting State which is party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), The African INtellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.
The Treaty regulates in detail the formal requirements with which any international application must comply.
The filing of a PCT application automatically has the effect of the designation of all PCT contracting States. The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State.
The international application is subjected to what is called an “international search.” That search is carried out by one of the major patent offices [1] and results in an “international search report,” that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued.
The international search report and the written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw his application, in particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application.
If the international application is not withdrawn, it is, together with the international search report, published by the International Bureau. The written opinion is not published at this time.
If the applicant decides to continue with the international application with a view to obtaining national (or regional) patents, he can, in relation to most contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated Office by furnishing a translation (where necessary) of the application into the official language of that Office, paying to it the necessary fees and acquiring the services of local patent agents.
If the applicant wishes to make amendments to the application, for example, in order to overcome documents identified in the search report and conclusions made in the written opinion, and to have the potential patentability of the “as-amended” application reviewed, the optional international preliminary examination may be used. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the major patent offices [2] and which contains, once again, a preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate his chances of obtaining patents, and, if the report is favorable, a stronger basis on which to continue with his application before the national and regional patent Offices.
The procedure under the PCT has great advantages for the applicant, the patent offices and the general public:
(i) applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees;
(ii) applicants can rest assured that, if their international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT contracting State patent Office during the national phase of the processing of the application;
(iii) on the basis of the international search report and the written opinion, applicants can evaluate with reasonable probability the chances of their invention being patented;
(iv) applicants have the possibility during the optional international preliminary examination to amend the international application and thus put it in order before processing by the various patent Offices;
(v) the search and examination work of patent Offices can be considerably reduced or eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability which are communicated to the national and regional Offices together with the international application;
(vi) since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
(vii) for applicants, international publication puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees.
Ultimately, the PCT:
- brings the world within reach;
- postpones the major costs associated with international patent protection;
- provides a strong basis for patenting decisions; and
- is used by the world’s major corporations, research institutions and universities when they seek international patent protection.
The PCT created a Union, which has an Assembly. Every State party to the PCT is a member of the Assembly.
The Assembly of the PCT Union has established a special measure to the benefit of (1) natural persons who are nationals of and reside in States whose per capita national income is below US$ 3,000, and (2) applicants, whether a natural person or not, who are nationals of and reside in States which are classed as least developed countries by the United Nations. That benefit consists of a reduction of 75 percent of certain fees under the Treaty.
Details concerning the PCT can be obtained by consulting the PCT website as well as the PCT Applicant’s Guide, published by WIPO in English and French (there are also Chinese, German and Japanese editions, which are not published by WIPO) and the PCT Newsletter, published by WIPO in English.
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.
It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.
Footnotes:
1. The Patent Offices of Australia, Austria, Canada, China, Finland, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden, the United States of America, and the European Patent Office act as International Searching Authorities under the PCT (situation on November 1, 2005).
2. The Patent Offices of Australia, Austria, Canada, China, Finland, Japan, the Republic of Korea, the Russian Federation, Sweden, the United States of America, and the European Patent Office act as International Preliminary Examining Authorities under the PCT (situation on November 1, 2005).
