PCT (Patent Cooperation Treaty) and its registration process

Navigating Global Patent Protection: A Comprehensive Guide to the Patent Cooperation Treaty (PCT)

INTRODUCTION

The Patent Cooperation Treaty (PCT) was signed in Washington, D.C. in 1970, although it did not take effect until 1978. The PCT was created to simplify and reduce the cost of getting international patent protection. Prior to the PCT, inventors had to file separate patent applications in each nation where they wanted protection, which was both time-consuming and costly.

The World Intellectual Property Organisation (WIPO), a United Nations specialised agency, manages the PCT. Since its commencement, the number of contracting nations has increased dramatically, with over 150 countries being a member of the pact. This extensive acceptance demonstrates the PCT’s significance in the worldwide intellectual property environment.

WHAT IS PATENT COOPERATION TREATY?

The Patent Cooperation Treaty (PCT) gives us an outline of an international treaty that is officially handled by the World Intellectual Property Organisation. The PCT is an international treaty with more than 150 Contracting States. The PCT is an international convention that establishes a mechanism for submitting patent applications and enables us to get patents in many nations throughout the world with a single application. The PCT streamlines the patent application procedure for applicants, and the ultimate decision to award a patent rests solely with each national or regional Patent Office.

BENEFITS OF PCT

1. Simplified Filing Process: One of the most notable advantages of the PCT is the opportunity to file a single “international” patent application rather than many national or regional patent applications. This international application has the same impact as a national patent application in all PCT contracting nations.
2. Extended Decision-Making Period: The PCT procedure includes an international phase, which allows applicants up to 18 months extra than the standard 12-month priority period to determine in which countries they want to seek patent protection. This additional time might be critical for determining the economic feasibility of an idea and securing finance.
3. Informed Decision-Making: During the international phase, applicants obtain useful information about their invention’s potential patentability, allowing them to make better informed judgements about whether to file patent applications in other countries.
4. Deferred expenditures: Although the PCT does not result in a “global patent,” it does postpone the majority of the expenditures associated with internationalising a patent application. The significant expenditures of translating the application, paying national fees, and engaging local patent agents in different countries can be postponed.

TO EFFECTIVELY NAVIGATE THE PCT SYSTEM, WHAT PARTICULAR REQUIREMENTS MUST THE CANDIDATES FULFIL AND ADHERE TO?

Eligibility Requirements:

1. Applicant: The applicant must be a national or resident of a PCT contracting state. If there are multiple applicants, at least one must fulfill this requirement.
2. Innovation Requirements: The invention must meet standard patentability criteria:

• • Novelty: The invention must be new and not previously disclosed to the public.
  • Inventive Step: The invention must not be obvious to someone with ordinary skill in the field.
  • Industrial Applicability: The invention must be capable of being made or used in some kind of industry.

3. Language Requirements: The application must be filed in one of the accepted languages, which include Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish. The accepted language may vary depending on the receiving office.
4. Time Requirements: International applications must be submitted within 12 months of the priority date of the earliest application claimed. This is known as the “priority year” under the Paris Convention for the Protection of Industrial Property.

Language Requirements:

The application must be filed in one of the accepted languages, which include Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish. However, the accepting language may vary depending on the receiving office.

Time Requirements:

International applications must be submitted within 12 months of the priority date of the earliest application claimed. This is referred to as the “priority year” under the Paris Convention on the Protection of Industrial Property.

WHAT IS THE PCT APPLICATION PROCESS?

1. Filing the International Application: The procedure begins with submitting the application to a competent receiving office. This is usually the national patent office of the applicant’s country of residence or nationality, or the International Bureau of WIPO in Geneva, Switzerland.
2. International Search: An authorised International Searching Authority (ISA) performs a thorough search of published documents that may impact the patentability of an invention. The ISA then provides an International Search Report, normally within 16 months after the priority date, which includes a written opinion on the invention’s probable patentability.
3. International Publication: International applications are quickly released after 18 months from the priority date. This publication contains both the application materials and the International Search Report.
4. International Preliminary Examination (optional): Applicants can seek an International Preliminary Examination, which provides an International Preliminary Report on Patentability. This report expresses a preliminary and non-binding judgement on whether the claimed invention is innovative, includes an inventive step, and is industrially relevant.
5. National/Regional Phase Entry: The international phase typically ends 30 months after the priority date (some offices allow for 31 months), and the application moves to the national or regional phase. At this stage, the applicant must meet the criteria of each selected office, which include paying national fees, providing translations, and hiring local agents.

CONCLUSION:

The Patent Cooperation Treaty represents a significant milestone in international intellectual property law, offering a streamlined pathway for inventors and companies seeking global patent protection. By providing a single filing process, extending decision-making periods, and offering crucial patentability information, the PCT has become an essential tool in the modern innovation ecosystem.

However, navigating the PCT system requires careful planning, strategic decision-making, and often expert assistance. Prospective applicants should carefully assess their invention’s potential, business opportunities, and financial resources before embarking on the PCT process. With the right knowledge and approach, the PCT can be a powerful component of an organization’s global intellectual property strategy, enabling protection of inventions across borders and driving international technological advancement.

As the landscape of innovation continues to evolve, the PCT is expected to remain a cornerstone of the international patent system, adapting and enhancing its processes to meet the needs of inventors and businesses in an increasingly interconnected world.