The PCT Treaty

 

The PCT (Patent Cooperation Treaty) treaty, that deals with the submission of international patent applications, was signed in Washington in 1970, in order to create a unified mechanism for registering a patent in several countries, based on a single international application. This is mainly to overcome the problem of non-uniformity in the existing procedure at various countries through-out the world.

 

The PCT is a United Nations (UN) international Treaty administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland.

 

There are 150 member states to the the Treaty (Djibouti joined in June 2016 and Kuwait will become bound on 9 September 2016). 

 

The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.

It is important to note that there is no "International Patent", the PCT functions as a patent application filing system. The applicant must still prosecute the international application in each national or regional office where patent protection is desired in what is called the "National Phase".

 

Institutions of the PCT:

 

International Bureau – IB in Geneva, Switzerland: Management of the Treaty and its provisions; collection, publication & distribution of international reports and documents relating to them from all the world; monitoring and supervision of other institutions.

 

Receiving Offices (RO): These offices are usually located within the national patent offices and are competent to receive international application requests from residents and citizens of that country.

 

International Searching Authorities (ISA): There are several International Searching Authorities, located in the major patent offices that have been appointed by the PCT Assembly as such, that employ large teams of search experts and possess large data bases of technical literature and patents library.

 

International Preliminary Examination Authority (IPEA): There are several international authorities for preliminary examination of patents, located at the largest patent offices. These offices employ large teams of examination experts.

 

PCT Procedure:

Briefly, an outline of the PCT procedure includes the following steps: Filing: filing of an international application, complying with the PCT formality requirements, in one language, and one set of fees.

Such an application may be filed by anyone who is a national or resident of a 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.

At the Receiving Office (RO) the application undergoes a formality examination and copies of it are sent to the International Bureau (IB) and to the International Searching Authority (ISA).

 

International Search: The international application is then subject to what is called an "international search" carried out by one of the International Searching Authorities (ISA). The purpose of the search is to discover prior art relevant to the invention claimed. The search results are recorded in an "International Search Report (ISR)," that is, a listing of the citations identified of such published documents (prior art) that might affect the patentability of the invention claimed in the international application.  At the same time, the ISA establishes a "Written Opinion (WO)" on the invention's potential patentability regarding: (a) novelty, (b) inventive step (c) industrial applicability.

 

Supplementary International Search (optional): This is an optional service, which was developed at the request of applicants and allows an extra search during the international phase, in addition to the search carried out by the original International Searching Authority (ISA). an ISA which is willing to carry out supplementary searches and which did not carry out the main search, identifies published documents which may not have been searched by the ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.

 

International Publication: The international search report and the written opinion are communicated by the ISA to the applicant who may decide to withdraw his application, in particular where the said report or opinion makes the granting of patents unlikely.

If the international application is not withdrawn, it is, together with the international search report and the written opinion, published by the International Bureau as soon as possible after the expiration of 18 months from the earliest filing date ("priority date").

The content of the international application is disclosed to the world.

 

International Preliminary Examination (optional): After receiving the International Search Report the applicant may within the subscribed time file a "Demand" for examination directly to the International Preliminary Examination Authority (IPEA). As part of the demand request, the applicant may amend most of the application as long as no new matter is added. The IPEA carries out an additional patentability analysis, after international publication, usually on an amended version of the application.

 

National Phase:

After the end of the PCT procedure, if the applicant decides to enter the national phase he must start to pursue the grant of his patent directly before the national (or regional) patent Offices of the countries in which he wants to obtain them. This must be done within the prescribed time limits, usually up to 30 months from the priority date. 

An International application is considered in each of the countries signed on the treaty as a national patent application, filed at the same time as the filing of the international application, subject to payment of international and national fees and performing other actions at times prescribed, necessary to enter the national phase. Entry into the national phase involves payment of the national fee to the patent office of each designated state or designated area, at the set currency and amount together with a language translation determined by that office, if necessary. Most countries have a special form for this stage. 

At the national phase the applicant will have to correspond with the national office himself, and usually will need a local address and a professional representative in each country. 

 

It should be emphasized that there is no "international patent". There is an International application for a patent that at a later stage, after the search has been conducted and examination to be held if requested, the application is transferred to the designated countries. Each country designated will treat the international application as a national application, , it will be examined and granted a patent in accordance with the law in that country.

 

The procedure under the PCT has great advantages for the applicant, the patent offices and the general public, in the centralization of the actions during the international phase and the option to postpone for a certain period the financial costs involved in dealing with the application in each country at the national phase:

(i) the applicant has up to 18 months more than he has in a procedure outside 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; he is assured that, if his international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any designated Office during the national phase of the processing of the application; on the basis of the international search report or the written opinion, he can evaluate with reasonable probability the chances of his invention being patented; and the applicant has the possibility during the international preliminary examination to amend the international application to put it in order before processing by the designated Offices;

(ii) the search and examination work of patent offices can be considerably reduced or virtually eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary examination report that accompany the international application;

(iii) 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 patentability of the claimed invention.