The Patent Co-operation Treaty,1970

The Patent Cooperation Treaty, or PCT as it is commonly known, was established in 1970. The Treaty, like any other Treaty, is a legal pact signed by several countries. The PCT’s goal is to simplify the initial filing procedure, making it easier and less expensive to file a patent application in a wide number of nations. This is accomplished by submitting an “international patent application.”

It is usually submitted with the national patent office of the Contracting State whose citizen or resident the applicant is, or, at the applicant’s discretion, with the International Bureau of WIPO in Geneva. The international application may also be filed with the European Patent Office (EPO), the African Regional Intellectual Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), or the Eurasian Patent Office (EPO) if the applicant is a national or resident of a Contracting State party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention.

Filing a PCT application instantly designates all Contracting States bound by the PCT on the international filing date. In each designated State, the international application has the same effect as if a national patent application had been submitted to that State’s national patent office.

PCT Filing Process

PCT being an international regime to protect inventions by granting patents has some rules and procedures of its own for doing so. Among them, some are mandatory (such as filing of the application, international search, international publication and national phase) and some are optional (such as supplementary international search and international preliminary examination). When the applicant files the PCT application at the regional patent office or directly at an international authority, the application is examined by the ISA (International Search Authority) whether it’s patentable or not and published in international journals so that the whole world will know about the invention and oppositions can be filed from all over the world.

Though international authorities conduct the examination and publishing, the granting of patents remains within the control of national or regional patent offices in what is known as the “national phase.” As a result, the filing method is

STEP 1 – Submit a Local Application

The initial candidates must submit a patent application in their own country.

STEP 2: PCT application filing

Applicants must make a national application as well as an international application in the same language and pay a single set of costs. The PCT application must be filed within 12 months of the national application. The national office determines the priority date.

PCT applications can also be lodged directly with WIPO’s RO (reception office).

STEP 3: Examine for Flaws

The receiving office conducts the check, which is divided into two parts. The first section addresses the requirements for assigning an international filing date as outlined in PCT Article 11(1). The second section addresses the formal and physical conditions outlined in Article 14.

4th Step: International Search Report

The application is forwarded to an international search authority. An International Searching Authority examines an application for previous art and state of the art. They stated clearly whether or not the document given is eligible for a patent grant. They base their decision on their written opinion. ISR (International search report) will provide a search report within 16 months of filing.

STEP 5: International Distribution

After submitting the relevant documents, the user application is published after 18 months. An application is kept secret before that. WIPO’s International Bureau (IB) publishes the PCT application. The application’s content is available to the general public.

STEP 6: Conduct an International Search

The application files a request for supplementary search before the expiration of 19 months from the priority date. This applicant has requested an international preliminary examination.

7th International Preliminary Report STEP

Whether or not a patent is issued, the search authority will issue a report on patentability. The relevant authorities must provide this within 28 months.

STEP 8: Begin the National Phase

The patent is given by the national office after all requirements have been met, and it is also granted in all other contracting states. A patent is awarded to the applicant before the end of the 30 months. Following that, the petitioner may seek protection.

Advantages of the Patent Cooperation Treaty (PCT)

PCT, which is quickly becoming the cornerstone of the worldwide patent system, simplifies the management and processing of patent applications. The following are some of the treaty’s advantages:

Patent Protection in Parallel

When an applicant registers for a patent in the United States, he or she is likely to lose the opportunity to receive patent protection in other nations. This is where PCT comes into play. The pact allows enterprises to have concurrent patent protection in the PCT contracting States, including the United States.

Comprehensive International Patent Search

When a patent application is filed with WIPO under PCT, the agency conducts a global patent search to determine whether the invention can be patented globally. This knowledge can have a substantial impact on the choice to patent the invention.

For example, if a patent is discovered to be unpatentable following disclosure in a PCT application, the choice to withdraw the application can save the cost of national phase submission. As a result, it is an effective risk management strategy.

Time-effective Application Process

Filing separate patent applications in every PCT Contracting state would necessitate amendments to the application by the laws and regulations of each member country. The process will be not only difficult but also time-consuming. The pact expedites all of your patent applications around the world. Some PCT Contracting States have PCT-Patent Prosecution Highway Agreements, which allow for further rapid processing.

Strong Arguments for Patenting

When an applicant files a PCT patent application, WIPO delivers a global patent search report and an opinion on the patentability of the product, which both make securing a patent award in certain countries much easier. The data is also useful in determining the likelihood of obtaining a patent.

Possibility to revise applications

Before entering the national phase countries, applicants can revise their PCT applications. Amendments might be made freely or in response to the PCT search and examination report.

Disadvantages of Patent Cooperation Treaty (PCT)

On the other hand, there are certain downsides to PCT. However, the benefits outweigh the minor drawbacks. The following are some of the treaty’s disadvantages:

Patent Coverage Is Limited

Only utility patents can be obtained through PCT patent applications. This method cannot be used to patent a design. The method also causes examination delays, and obtaining a patent through the PCT route takes longer. However, the PCT allows you an additional 18/19 months to choose the nations of interest.

More Expensive Patent Process

The PCT also increases the expense of the patent process by requiring an applicant to prosecute the application in each nation separately. Attorney fees are also incurred during the international phase. The procedure, on the other hand, can give favourable and cost-effective answers, such as accelerated prosecutions. However, PCT fee discounts are available when filing the PCT application electronically, and applicants from developing nations receive a 90% reduction in the official filing price.

Reference

https://www.wipo.int/treaties/en/registration/pct/summary_pct.html

https://www.wipo.int/pct/en/faqs/faqs.html

https://www.mondaq.com/india/patent/783950/international-patent-filing-via-patent-co-operation-treaty-pct

Aishwarya Says:

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