The Patent Cooperation Treaty (PCT) is a patent protection treaty which involves more than 150 countries and territories. It was concluded in 1970 and allows an inventor to seek patent protection in more than one country at the same time. This treaty was deemed necessary because many inventors sought the sale and commercialization of their products abroad.
The PCT does not only assist patent applicants with patent protection in other countries. It enables patent offices to make decisions about the granting of patents. The PCT also provides members of the general public with access to much information about protected inventions.
Any country or territory which is part of the Paris Convention for the Protection of Industrial Property may also become part of the PCT. Today, almost all countries of the world adhere to the PCT and its regulations over patents.
How the PCT Works
The establishment of the PCT allowed inventors to begin filing international patent applications. All inventors who are nationals or residents of a PCT member may file such an application.
International patent applications under the PCT are to be filed in the patent office of the inventor’s home country, country of residence, or the International Bureau of WIPO. A PCT application also sets a filing date in a member jurisdiction. However, the application does not directly result in the granting of a patent. National and regional patent authorities are to make the final decision about the granting of the patent.
The PCT Procedure
Patent applications filed under the PCT must go through a six-step procedure.
- Filing. An international application is to be filed with a national or regional patent office. This application must comply with formality requirements, be in one language, and be accompanied with a fee payment.
- International search. The international search identifies documents and technical literature which determine the patentability of an invention. It ends when the relevant authorities make a decision on the invention’s patentability.
- International publication. The international publication takes place 18 months after the earliest filing date. It publicly discloses all content of the international application. This allows anyone who requires information about the application to access it.
- Supplementary international search (optional). The supplementary international search is used to identify documents which were not found in the international search.
- International preliminary examination (optional). The international preliminary examination performs an additional analysis on an invention’s patentability.
- National phase. The national phase usually takes place 30 months after the filing date of the initial application. In it, applicants pursue the grant of a patent directly from a national or regional patent office.
Benefits of the PCT
There are many benefits which the PCT provides to applicants. For example, all international patent applications which are in the form prescribed by the PCT cannot be rejected on formal grounds by any PCT member’s national patent office during the national phase. It also saves applicants much time and effort because the non-PCT method may take up to five years in certain instances.
Third parties who may submit patent-related observations also benefit from the PCT. These third parties may make use of a system which allows them to make observations through references to prior art. They can better assess the patentability of any invention because applications are published together with an international search report.
In addition, national patent offices can use the PCT to their advantage. The international search report, written application, and if necessary, the international preliminary report greatly reduce the search and examination work which these offices are to conduct.
WIPO’s Role in the PCT
The World Intellectual Property Organization (WIPO) administers the PCT. It performs several key tasks pertaining to all filed PCT applications. WIPO receives and stores all application documents, provides legal advice upon request to patent offices and users, translates documents, performs formality examinations, and communicates documents to patent offices and third parties, among other duties.
WIPO also coordinates the entire PCT system and provides assistance to members and their national patent offices. To spread awareness about the PCT, WIPO publishes the PCT Applicant’s Guide and PCT Newsletter, organizes PCT training courses and seminars, and creates and communicates PCT information online. Finally, WIPO serves as the Secretariat to the PCT Working Group and the PCT Assembly.
This article is brought to you by Exy Intellectual Property Malaysia and Singapore.