Patent Cooperation Treaty

Patent Cooperation Treaty makes it feasible to seek patent protection for an innovation in many nations at the same time by filing an “international” patent application. Wherever there is an innovation, you may immediately file separate patent applications at the same time in all the countries where you want to protect your idea, but it becomes complicated when you require a patent from each nation.

With the Patents Cooperation Treaty, anyone who is a national or resident of a contracting state may file a patents application. It is usually submitted with the national patent office of the contracting state who’s national or resident the applicant is, or, at the applicant’s discretion, with the international bureau of WIPO.

If there are several applicants mentioned in the international application, a person is only qualified to file an international patent application only if they are a native or resident of a PCT Contracting State.

This article by Antariksh Anant gives a brief introduction to the understanding of the PCT system, with a special emphasis on the system’s application, procedures, and benefits of PCT.

Brief History

The Paris Convention for the Protection of Industrial Property of 1883 was the first convention to provide a foundation for patent protection across the globe and it allows you to file separate patent applications in other Paris Convention nations within 12 months of the filing date of the first patent application, providing you the benefit of claiming the filing date of the first application in all those countries.

After Recognizing the possibility of the need for further specialized treaties, the Paris Convention’s authors specifically included the freedom of member nations to enter into special agreements amongst themselves like PCT[1].

The PCT is just the second treaty on the subject of patents to be signed. PCT bought a vast difference that many post-PCT multilateral accords must include explicit references to the PCT and even demand PCT participation as a requirement for signing that treaty. The PCT system has a slightly complex legal foundation.

The system is controlled by the Treaty, a set of extensive regulations, and Administrative Instructions, which deal primarily with the interactions necessary for the processing of international applications among offices, agencies, and WIPO.

Twelve bilateral agreements govern relations between WIPO and the intellectual property protection offices that currently serve as PCT International Searching and Preliminary Examining Authorities, and the framework is established by a volume of International Search and Preliminary Examination Guidelines. Furthermore, the PCT Receiving Office Guidelines detail the duties of national offices across the PCT procedure.

Application of Patent Cooperation Treaty

A person or organization may use a patent cooperation pact by filing an international application with your national patent office, or directly with WIPO if authorized by your country’s national security restrictions. Both offices serve as PCT “Receiving Offices.”

When there is an innovation, these offices either submit such applications to international authorities or meet with the PCT formality criteria and they (ISA, SISA, IPEA) discover published patent documents and technical literature that may have an impact on whether your invention is patentable and develops a written opinion on the prospective patentability of your invention and transmits reports to WIPO or they immediately transfer them to WIPO[2].

Later, WIPO issues a publication on patent scope, which is sent to authorized national and regional patent offices to grant patents. After the PCT procedure is completed, typically 30 months from the earliest filing date of your first application, from which you claim priority, you begin to pursue the issuance of your patents immediately before the national patent offices of the nations in which you wish to get them this finally phase is usually referred to as national phase.

If the international patent application meets the minimal conditions for obtaining an international filing date, it will have the same effect as a national patent application in or for all PCT Contracting States. Furthermore, provided you follow specific formal standards outlined in the Treaty and Regulations, which are obligatory on all PCT Contracting States, you will not need to adjust to different national formal requirements.

Prior 2004, applications had to specifically specify which Contracting States they wanted to reserve the right to enter in the national phase[3]. But, now because of the implementation of an automated designation mechanism, the filing of an application now represents the designation of all Contracting States that are bound by the Treaty on the international filing date.

The filing of a PCT application has the impact of a “regular national filing” in each of the Contracting States, providing the applicant has a connection with at least one Contracting State, either via nationality or residency, and the application meets the basic content criteria.

As a result, the “international filing date” of the international application is deemed to be the “actual” filing date in each of the Contracting States. If there are two or more candidates, only one of them must qualify based on nationality or residency in a Contracting State.

International Searching Authority

When applications are filed, the receiving offices forward them to international authorities such as the International Search Authority (ISA), which creates an international search report, which is a preliminary and non-binding opinion on whether the invention appears to meet the patentability criteria based on the search report results.

The written opinion, which is sent to you along with the international search report, assists you in understanding and interpreting the results of the search report with specific reference to the text of your international application, and is especially useful in assessing your chances of obtaining a patent.

If International Preliminary Examination is not requested, the written opinion will serve as the foundation for the international preliminary report on patentability.

International Preliminary Examination

International preliminary examination is a second review of the prospective patentability of the invention that is totally voluntary and is based on the same standards as the ISA’s written opinion.

If an applicant wishes to amend their international application in an attempt to overcome documents identified in the international search report and conclusions made in the ISA’s written opinion, an International Preliminary Examination is the only way to actively participate in the review process and possibly impact the examiner’s findings before entering the country.

Procedure of Patent Cooperation Treaty to a US Applicant

The Patent Cooperation Treaty (PCT) allows the United States applicant, like any other applicant, to file one application, “an international application,” in a standardized format in English in the United States Receiving Office, and have that application recognized as a regular national or regional filing in as many Contracting States to the PCT as the applicant specifies.

The submission of an international application immediately designates all contracting nations to the PCT on the date of filing. Similarly, the PCT allows foreign applicants to file a PCT international application in their native language, identifying the United States of America, in their home patent office, and have the application recognized as a standard U.S. national filing.

The PCT also requires the preparation of an international search report and written opinion within 16 months of the priority date, as well as the publication of the international application within 18 months of the priority date. The application will be submitted to national processes for issuing patents in each of the specified countries and 30 months following the filing of any priority application for the invention, or the international filing date if no priority is claimed.

If such nations file a demand for an international preliminary assessment within 19 months of the priority date, the term for joining the national stage is extended to 30 months from the priority date[4].

Typically, a national U.S. application is filed first. The priority advantage of the U.S. national application filing date will be claimed if an international application for the same subject matter is submitted later within the priority year permitted by the Paris Convention[5].

Advantages

1. According to the PCT, no one other than the applicant or a person authorized by the applicant may have access to any material contained in the file of an international application prior to the date of international publication. Except for materials related to the application’s examination, all documents in the file maintained by WIPO are accessible to other parties on that date.
2. The presentation of a single “international” patent application necessitates the filing of a PCT in a single language and the payment of a single set of fees.
3. International Search, in which an International Searching Authority (ISA) examines the invention and renders an opinion on its possible patentability, that helps you in determining your probability of obtaining a patent.
4. International publication, in which the substance of the international application is published worldwide, immediately following the expiration of the term of 18 months from the earliest filing date[6].
5. “International Preliminary Examining” assists you in revising your international application and provides a second opportunity.

Disadvantages

1. Applications submitted under PCT from outside the United States may not be reviewed or acted on before 20 months from the priority date[7].
2. PCT may have a significant impact on the domestic economy by producing a large influx of international patents that the industry will have to invalidate via court action.

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Reference

[1] Erstling J, and Boutillon I, ‘The Patent Cooperation Treaty: At the Centre of The International Patent System’ (SSRN, 2006), Available At

[2] ‘PCT Faqs’ (Wipo.int, 2021), Available At

[3] Erstling J, and Boutillon I, ‘The Patent Cooperation Treaty: At the Centre of The International Patent System’ (SSRN, 2006), Available At

[4] ‘Time Limits for Entering National/Regional Phase Under PCT Chapters I And II (In Months from Priority Date)’ (Wipo.int, 2021), Available At

[5] ‘1801 Basic Patent Cooperation Treaty (PCT) Principles [R-10.2019]’ (upsto.gov, 2019), Available At

[6] ‘What Is the Patent Cooperation Treaty (PCT)?’ (Inapi.cl, 2021), Available At

[7] GOLDSMITH, S. (1969). The Patent Cooperation Treaty and the Revised Draft Published by the International Bureau at Geneva. The International Lawyer, 3(2), 364-371. Available At

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