The PCT is an international treaty which provides a system for filing patent applications and allows you to obtain patents in multiple countries around the world on the basis of a single patent application.
The PCT simplifies the procedure for obtaining patent protection in many countries, making it more efficient and economical for:
(1) users of the patent system (applicants and inventors); and
(2) national Offices.
While the PCT simplifies the patent filing process for you, the ultimate decision to grant a patent rests exclusively with each national or regional patent Office.
PCT Contracting States
The PCT was signed in June 1970, in Washington, D.C., and became operational in June 1978 with 18 Contracting States. The terms Contracting State, PCT country and PCT Member State, are all used interchangeably to identify countries which are party to the PCT system. The PCT now has 141 Contracting States, providing you with near worldwide patent filing coverage. Please consult the website for an updated list of Contracting States.
Role of the International Bureau of WIPO
The staff of WIPO, generally referred to as the International Bureau, is responsible for the international coordination and management of the PCT system. This includes the review, communication, processing and publication of PCT applications and associated documents received by WIPO. In addition to these responsibilities, WIPO also provides regular advice and assistance to PCT Member States, applicants and other interested parties on the advantages and operations of the PCT system.
WIPO regularly promotes and raises awareness of the PCT with a wide range of users, i.e., IP Offices, universities, industry, R & D institutions, attorneys, and the general public, by holding seminars, training courses and similar events on the PCT system in locations around the world.
Why Use the PCT
The PCT is a cornerstone of the international patent system. It provides you with a worldwide system for the simplified filing of patent applications that:
* brings the world within reach;
* postpones major costs and provides you with additional time to consider your various patenting options;
* provides a strong basis for patenting decisions; and
* is used by the world’s major corporations, universities and research institutions when they seek international patent protection.
Brings the World within Reach
A single PCT application has the same legal effect as a national patent application in each of the PCT Contracting States. Without the PCT, you would have to file a separate patent application in each country of interest to you. For a 30-page patent application, the PCT would save you the time, effort and expense of preparing separate applications in various languages containing in total over 4,000 pages. (4,000 is an approximation of the number of pages if an application were to be filed in the separate Contracting States).
Cost and Time Advantages
A major feature of the PCT system is that it delays (and in some cases saves) various costs associated with obtaining patents on a global scale.
In addition to delaying costs, you also benefit from additional time to:
* further develop or market your invention;
* consider and explore your various patenting options;
* find investors, partners and secure funding; and
* investigate the commercial possibilities of your invention.
Translations, National Fees, Agent/Attorney Fees
The initial patenting costs that would be deferred are:
* translations of the patent application (which are highly technical documents) into various national languages;
* official fees charged by national or regional patent Offices; and
* fees for the services of local patent agents or attorneys
Cost Deferral Compared to the Traditional Patent System
If you were to use the traditional patent system, that it is to say, by filing separate patent applications in each country of interest to you, you would incur a significant portion of your patenting costs within one year from the date you filed your local (first) patent application.
In contrast, under the PCT, you have up to 30 months from the priority date to incur the majority of the patenting costs, representing 18 months of additional time when compared to the traditional patent system.
The PCT – Overview of the Process
The PCT process is comprised of the following main steps:
First Patent Application
(1) Filing of a local patent application (in the majority of cases)
International Phase
(2) Filing of a PCT application
(3) International search report (ISR) and written opinion
(4) International publication
(5) Optional supplementary international search
(6) Optional international preliminary examination
National Phase
(7) Processing of the PCT application (2) before national and/or regional patent Offices
Filing of a Local (First) Patent Application
The timeline provides you with a graphical representation of the PCT procedure and sequence. Each description is linked to the red highlighted sequence of events.
Typically, you would prepare your first patent application and file it with your national or regional patent Office. This patent application is commonly referred to as your local application and when in completed form, contains the following elements:
(1) A request (or petition)
(2) A description (also referred to as specification)
(3) One or more claims
(4) An abstract
(5) One or more drawings (where necessary)
Filing of a PCT Application
Based on the contents of your local (first) patent application you would then prepare and file your PCT application. You have up to 12 months from the filing date of your local (first) application to file your PCT application with the receiving Office of your national or regional patent Office. You may also file your PCT application directly with the receiving Office of WIPO if permitted by the national security provisions in your national law. Your PCT application has the same effect as a separate application filed in each PCT country.
International Search Report (ISR) and Written Opinion of the ISA
Each PCT Member State has selected at least one International Searching Authority (ISA) to perform international searches and to establish written opinions for its applicants, referred to in PCT terms as the “competent” International Searching Authority. You will receive, at around 16 months from the filing date of your local application, an international search report (ISR) and a written opinion from a national or regional patent Office that has been appointed as an International Searching Authority (ISA) under the PCT. The ISR will contain citations of patent documents and other technological references relevant to the patentability of your invention. The written opinion complements the ISR by providing a preliminary non-binding patentability assessment of your invention taking into consideration the references contained in the ISR.
International Preliminary Report on Patentability
After having considered the written opinion of the ISA, you may decide not to continue with the assessment of your PCT application and not file a demand for international preliminary examination. In this case, WIPO will attach a cover sheet to this written opinion effectively converting it into the international preliminary report on patentability. The international preliminary report on patentability is available for public inspection 30 months after the priority date of your PCT application (the date of your first-filed local patent application).
International Publication
The International Bureau of WIPO publishes your PCT application on PATENTSCOPE® shortly after 18 months from the priority date of your PCT application. Publication serves to provide technical disclosure of your invention which helps fuel greater technological progress and development.
(optional) - Supplementary International Search
You also have the option of requesting that a supplementary international search be conducted on your PCT application. The request from supplementary international search may be filed anytime prior to the expiry of 19 months from the priority date. The supplementary search is completely optional but may be of interest in cases where a more complete overview of the prior art is desired, particularly in respect of specific languages.
The supplementary international search service is not available across all International Searching Authorities. Those offering this service do so against the payment of a fee.The supplementary international search report prepared by the International Searching Authority should be available by 28 months from the priority date.
(optional) - Filing of a Demand for International Preliminary Examination
This part of the PCT procedure is optional. If you are not entirely satisfied with the contents of the written opinion, you may decide to continue the assessment of your invention under the PCT by filing a demand for international preliminary examination with a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA.
You have at least 22 months from the priority date of your PCT application to file your demand with the competent IPEA
International Preliminary Report on Patentability
At about 28 months from the priority date, the IPEA will send you an international preliminary report on patentability (Chapter II) containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of your invention. This report is a non-binding opinion on patentability and is only provided to applicants who have filed a demand for international preliminary examination as described above.
Entry into the National Phase
Entry into the national phase represents the end of the international phase of the PCT procedure and the beginning of the national patent grant procedure. The international preliminary report on patentability (either under Chapter I or Chapter II), which you received during the international phase of the PCT procedure, will help you evaluate your chances of obtaining a patent in the countries of interest to you. The international preliminary report on patentability also provides guidance to each national or regional patent Office on whether a patent should be granted for your invention.
Once in the national phase, your patent application is subject to the patent laws, regulations and practices of each country. Rejections on form and content may not be raised provided that they conform to the requirements of the PCT.
Since its adoption in Washington in 1970, the PCT has enjoyed great success and continued growth. It has a near global membership of 139 Contracting States with millions of inventors, big and small, who fuel the world’s technological advances through the use of the PCT and national patent systems.
The PCT has revolutionized the way in which patents are obtained throughout the world. The search and examination reports, cornerstones of the PCT system, provide you with valuable information on which you can base your business and patenting decisions. The time delay feature of the PCT preserves your patent options, delays costs, giving you additional time to obtain financing and assess commercial, licensing and partnership opportunities.
The PCT helps you obtain patents for your inventions. It is the Smart Patenting Solution – your best option for obtaining patents on a global scale.
--Ashok--
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