Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT 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.
Summary of the Patent Cooperation Treaty (PCT) (1970)
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT 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.
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, 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 (EAPO), respectively.
The Treaty regulates in detail the formal requirements with which international applications must comply.
Filing a PCT application has the effect of automatically designating all Contracting States bound by the PCT on the international filing date. The effect of the international application is the same in each designated State as if a national patent application had been filed with the national patent office of that State.
The international application is subjected to an international search. That search is carried out by one of the competent International Searching Authorities (ISA) under the PCT [1] and results in an international search report, that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding written opinion on whether the invention appears to meet patentability criteria in light of the search report results is also issued.
The international search report and written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw the application, in particular where the content of the report and opinion suggests that the granting of patents is unlikely, or the applicant may decide to amend the claims in the application.
If the international application is not withdrawn, it is published by the International Bureau, together with the international search report. At the same time, the written opinion is made available on PATENTSCOPE.
Before the expiration of 22 months from the priority date, the applicant has the option to request a Supplementary International Searching Authority (SISA) (an ISA willing to offer this service) to carry out an additional search of relevant documentation, specifically focusing on documents in the particular language in which that authority specializes. The goal of this additional search is to reduce the likelihood of further documents coming to light in the national phase that would make granting the patent unlikely.
An applicant that decides to continue with the international application with a view to seeking national (or regional) patents can, in relation to most Contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated office by furnishing a translation (where necessary) of the application into the official language of that office, paying to it the necessary fees and acquiring the services of local patent agents.
If the applicant wishes to make amendments to the application – for example, in order to address documents identified in the search report and conclusions made in the written opinion – and to have the potential patentability of the "as-amended" application reviewed – an optional international preliminary examination may be requested. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the competent International Preliminary Examining Authorities (IPEA) under the PCT [2] and which contains a preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate the chances of obtaining a patent and, if the report is favorable, a stronger basis on which to continue with the application before national and regional patent offices. If no international preliminary examination has been requested, the International Bureau establishes an international preliminary report on patentability (IPRP Chapter I) on the basis of the written opinion of the ISA and communicates this report to the designated offices.
The procedure under the PCT has numerous advantages for applicants, patent offices and the general public:
(i) applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, appoint local patent agents in each foreign country, prepare the necessary translations and pay national fees;
(ii) applicants can rest assured that, if their 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;
(iii) on the basis of the international search report and the written opinion, applicants can evaluate with reasonable probability the chances of their invention being patented;
(iv) applicants have the possibility, during the optional international preliminary examination, to amend the international application and thus put it in order before processing by the various patent offices;
(v) the search and examination work of patent offices can be considerably reduced or eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability which are communicated to designated offices together with the international application;
(vi) applicants are able to access fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements;
(vii) since each international application is published with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
(viii) for applicants, international publication on PATENTSCOPE puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees.
Ultimately, the PCT:
- brings the world within reach;
- streamlines the process of fulfilling diverse formality requirements;
- postpones the major costs associated with international patent protection;
- provides a strong basis for patenting decisions; and
- is used by the world's major corporations, research institutions and universities in seeking international patent protection.
The PCT created a Union which has an Assembly. Every State party to the PCT is a member of the Assembly. Among the most important tasks of the Assembly are the amendment of the Regulations issued under the Treaty, the adoption of the biennial program and budget of the Union and the fixing of certain fees connected with the use of the PCT system.
The Assembly of the PCT Union has established a special measure to benefit (1) an applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below US$ 25,000 (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US$ values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent five-year average yearly filing figures published by the International Bureau, and (2) applicants, whether natural persons or not, who are nationals of and reside in a State that is listed as being classified by the United Nations as a LDC. That benefit consists of a reduction of 90 per cent of certain fees under the Treaty.
Details concerning the PCT can be obtained by consulting the PCT website, the PCT Applicant's Guide, published by WIPO in English and French and the PCT Newsletter, published by WIPO in English.
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.
It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.
[1] The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic Patent Institute and the Visegrad Patent Institute act as International Searching Authorities under the PCT (status on July 1, 2018). An agreement enabling the office of the Philippines to act as ISA has been signed; however, this office has not yet commenced operations.
[2] The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic Patent Institute and the Visegrad Patent Institute act as International Preliminary Examining Authorities under the PCT (status on July 1, 2018). An agreement enabling the office of the Philippines to act as IPEA has been signed; however, this office has not yet commenced operations.
PCT – The International Patent System
The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries. Read more about the PCT.
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.
A single filing of a PCT application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA).[4] Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.
A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority.[5] In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.
The contracting states,[6] the states which are parties to the PCT, constitute the International Patent Cooperation Union.[6]
Contents
History[edit]
The Washington Diplomatic Conference on the Patent Cooperation Treaty was held in Washington from 25 May to 19 June 1970. The Patent Cooperation Treaty was signed on the last day of the conference on 19 June 1970. The Treaty entered into force on 24 January 1978, initially with 18 contracting states.[7] The first international applications were filed on 1 June 1978.[7] The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.
Accession[edit]
Any contracting state to the Paris Convention for the Protection of Industrial Property can become a member of the PCT.[8]
A majority of the world's countries are parties to the PCT, including all of the major industrialized countries (with a few exceptions, including Argentina, and Taiwan). As of 17 October 2019, there were 153 contracting states to the PCT. Samoa became the 153rd contracting state on 2nd October 2019,[9][10][11] and the PCT will enter into force there on 2 January 2020.[9][10]
Procedure[edit]
The main advantages of the PCT procedure, also referred to as the international procedure, are the possibility to maximally delay: (a) the national or regional procedures; (b) the respective fees and translation costs; and, (c) the unified filing procedure. From a practical standpoint, this could allow new ventures more time to locate strategic partnerships, funding, and markets, before their technology becomes public.
A PCT application (also called "international patent application") has two phases.[12] The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT. The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.[12][13] A PCT application, as such, is not an actual request that a patent be granted, and it is not converted into one unless and until it enters the "national phase".[14]
Filing[edit]
The first step of the procedure consists in filing an international (patent) application with a competent patent office, called a Receiving Office (RO). This application is called an international application or simply a PCT application since it does not result in an international patent nor in a PCT patent (neither of which exists). The PCT application needs to be filed in one language only, although translations may still be required for international search and international publication, depending on the language of filing and the International Searching Authority to be used.
At least one applicant (either a physical or legal person) must be a national or resident of a contracting state to the PCT; otherwise, no PCT filing date is accorded.[15] If a PCT filing date is erroneously accorded, the Receiving Office may, within four months from the filing date, declare that the application should be considered withdrawn.[16] The requirement that at least one applicant must be a national or resident of a contracting state to the PCT needs, however, "only to be complied with at the time of filing the international application. Later changes in the applicant's country of residence (or nationality) ... have no consequence on the validity of the international application itself."[17]
In most member states, the applicant or at least one of the applicants of the application is required to be a national or resident of the state of the receiving office where the application is filed. Applicants from any contracting state may file a PCT application at the International Bureau in Geneva,[18] subject to national security provisions.[19]
Upon filing of the PCT application, all contracting states are automatically designated.[notes 1][notes 2] Subject to reservations made by any contracting state, a PCT application fulfilling the requirements of the treaty and accorded a PCT filing date has the effect of a regular national application in each designated state as of the PCT filing date, which date is considered to be the actual filing date in each designated State.[20] However, in some countries, the prior effect of a PCT application filed outside such countries may be different from the prior effect of a domestic application.
| International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA)[21] |
| 1. Austrian Patent Office (AT). |
| 2. Australian Patent Office (AU). |
| 3. National Institute of Industrial Property (BR).[22] |
| 4. Canadian Intellectual Property Office (CA). |
| 5. National Institute of Industrial Property of Chile(CL)[23][24] |
| 6. China's National Intellectual Property Administration(CN). |
| 7. Egyptian Patent Office (EG).[25] |
| 8. European Patent Office (EP). |
| 9. Spanish Patent and Trademark Office (ES). |
| 10. Finnish Patent and Registration Office (FI). |
| 11. Indian Patent Office (IN).[26][27] |
| 12. Israel Patent Office (IL).[28] |
| 13. Japan Patent Office (JP). |
| 14. Korean Intellectual Property Office (KR). |
| 15. Federal Service for Intellectual Property (Rospatent) (Russian Federation) (RU). |
| 16. Swedish Patent and Registration Office (SE). |
| 17. Intellectual Property Office of Singapore (SG)[24][29] |
| 18. Turkish Patent Institute (TPI)[30][31] |
| 19. State Intellectual Property Service of Ukraine(UA).[32][33] |
| 20. United States Patent and Trademark Office (US). |
| 21. Nordic Patent Institute (XN). |
| 22. Visegrad Patent Institute (XV).[34] |
| Note 1: All International Searching Authorities are also International Preliminary Examining Authorities. |
| Note 2: The Intellectual Property Office of the Philippines was appointed as ISA and IPEA in October 2017. Its appointment will become effective when it is ready to begin operations.[35] |
Search and written opinion[edit]
A search or international search is then made by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject matter. The search results in an International Search Report (ISR), together with a written opinion regarding patentability.[36] The ISA(s) that the applicant can choose depends on the receiving Office with which the applicant filed the international application.[37] In 2013, the most selected ISAs were the European Patent Office(EPO) (with 37.7% of all ISRs issued), followed by the Japan Patent Office (JPO) (20.7%) and the Korean Intellectual Property Office (KIPO) (14.8%).[38]
The ISR is supposed to be provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).
The ISR is published together with the PCT application (or as soon as possible afterwards). The written opinion is initially confidential, but unless it is superseded by an International Preliminary Examination Report (see optional examination, below), it is made available in the form of an International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty, or IPRP Chapter I), within 30 months of the filing date or a priority date, if any.[39] If the ISR is not in English, it is translated into English for publication.[40] A designated Office may require a translation of the IPRP Chapter I into English.[41]
The international search report can help the applicant decide whether it would be worthwhile seeking national protection, and if so, in how many countries, as fees and other expenses, including translation costs, must be paid to enter the national phase in each country. Yet another advantage of filing a PCT application under the PCT is that many national patent authorities will rely on the international search report (although the PCT does not obligate them to do so) instead of performing a prior art search themselves, and the applicant may thus be able to save search fees.[42]
In addition to the compulsory international search, at least one optional supplementary international search may also be carried out by participating International Searching Authorities,[43] upon request by the applicant[44] and payment of corresponding fees.[45] The purpose is to reduce the likelihood of seeing new prior art being cited in the subsequent national phases.[46] A supplementary international search is said to allow applicants to obtain an additional search report "taking into account the growing linguistic diversity of the prior art being found".[46] In 2009 and 2010, the demand for supplementary international searches was relatively low.[47]
Publication[edit]
The PCT application is published by the International Bureau at the WIPO, based in Geneva, Switzerland, in one of the ten "languages of publication": Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish.[48] The publication normally takes place promptly after 18 months from the filing date or, if a priority is claimed, from the earliest priority date.[49][50] There are two exceptions to this rule, however. First, a PCT application may be published earlier if the applicant requests early publication.[50][51] Secondly, if 18 months after the priority date, the PCT application designates only the United States, then the application is not automatically published.[52]
From the publication of the PCT application until 28 months after the priority date, any third party may file observations regarding the novelty and inventive step of the invention. The observations may be submitted anonymously, and no fee is due for filing such observations.[53][54][55]
Optional examination[edit]
An international preliminary examination may optionally be requested ("demanded").[56][57] The international preliminary examination is conducted by an authorized International Preliminary Examination Authority (IPEA) and its objective is "to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable".[58] This results in an International Preliminary Examination Report (IPER). Since 2004, the IPER bears the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter II").[59] The filing of a demand for international preliminary examination, which must be done within a time limit,[60] is subject to the payment of a "handling fee" for the benefit of the International Bureau[61] and a "preliminary examination fee" for the benefit of the IPEA.[62] The cost of filing a demand varies depending on the IPEA used by the applicant.[37][57] The IPEA(s) that the applicant can choose however depends on the receiving Office with which the applicant filed the PCT application (the same applies to ISAs).[37]
If the written opinion established by the International Searching Authority (ISA) is positive, "there is little value to be obtained from filing a demand".[57] However, "[for] cases where the written opinion of the ISA contains negative findings, the savings in the applicant's/agent's time and, where applicable, agent's fees, required by multiple responses to national offices may well justify the use of the Chapter II procedure."[63] The demand for an international preliminary examination also gives the applicant an opportunity to amend the claims, description and drawings. Otherwise, the applicant can only modify the claims once within two months from the time of the ISR has been transmitted.[64] There are many advantages, such as cost and effort savings ("as well as possibly shortened pendency/faster grants"[63]), in receiving a favourable IPRP Chapter II, i.e. a favourable report following an international preliminary examination.[63] For instance, national offices "with a smaller examining staff and those without examiners tend to rely more heavily on the results in the IPRP Chapter II".[63]
When an examination is demanded, the contracting states for which the examination is demanded are called Elected Offices (under Chapter II), otherwise they are called Designated Offices (under Chapter I). The election of a contracting state correspondingly means electing it when demanding (requesting) the examination.
An alternative to the filing of a demand for international preliminary examination is to file informal comments in response to the written opinion established by the ISA. These informal comments are not published. The informal comments should be submitted to the International Bureau (IB), and not to the ISA or the IPEA.[65] They are kept in the file of the PCT application and, in the case where no demand is filed, forwarded to the designated offices,[57][65] which are free to require a translation of the informal comments.[65]
Subject matter[edit]
The PCT does not make any specific provision concerning the types of invention which may be the subject of an international application. Rules 39 and 67 permit International Searching and Preliminary Examining Authorities not to carry out search and examination on certain types of subject matter, such as scientific and mathematical theories, methods of doing business and computer programs to the extent that the Authority is not equipped to carry out a search or international preliminary examination concerning such programs. However, while a lack of international search may make national processing more difficult, Article 27(5) PCT makes clear that this does not affect the issue of whether the invention is patentable under the laws of the designated States:
National and regional phase[edit]
Finally, at 30 months[66] from the filing date of the PCT application or from the earliest priority date of the application if a priority is claimed, the international phase ends and the PCT application enters in national and regional phase. However, any national law may fix time limits which expire later than 30 months. For instance, it is possible to enter the European regional phase at 31 months from the earliest priority date. National and regional phases can also be started earlier on the express request of the applicant, even before publication of the international application.[67]
If the entry into national or regional phase is not performed within the prescribed time limit, the PCT application generally ceases to have the effect of a national or regional application.[68]
Statistics[edit]
The millionth PCT application was filed at the end of 2004,[69] whereas the two millionth application was filed in 2011.[70] The first ever decline in the number of filed PCT applications in over 30 years occurred in 2009, with a 4.5 percent drop compared to 2008.[71] In 2013, about 205,000 international applications were filed, making 2013 the first year during which more than 200,000 PCT applications were filed in one year.[72] The 3 millionth PCT application was published on 2 February 2017.[73] WIPO provides regular updated statistics on its website
There are three different types of intellectual property protection, each protecting a specific type of creation. For example, trademarks are available for short phrases and symbols used for identifying a company or brand, while copyrights are available for original works authorship, such as literary and dramatic works. Patents, on the other hand, are available for inventions -- products or processes -- that provide a new way of doing something.
Since we live in a global economy, there are many intellectual property laws that stretch across nations, which means the owners of a given item of intellectual property can be protected in places other than their home countries. The Patent Cooperation Treaty (PCT) is important for patent law because it allows patent-seekers to file an international application. The PCT is open to countries that were a party to the 1883 Paris Convention for the Protection of Industrial Property. The PCT concluded in 1970, then amended in 1979, and modified twice, in 1984 and 2001.
You can visit FindLaw's section on Intellectual Property for more information and resources about patents, trademarks, and copyrights.
What Does the PCT Do?
The Patent Cooperation Treaty allows inventors to file international patent applications, which in turn gives their inventions patent protection simultaneously in several countries. An inventor may file this type of application if he or she is a national or resident of a Contracting State, meaning the country is party to the PCT. The application can be filed in the national patent office of the country of which the inventor is a resident or national (for example, a U.S. citizen or resident can file the application with the USPTO), or it can be filed with the International Bureau of WIPO in Geneva.
The Procedure under the PCT
The procedure under the Patent Cooperation Treaty begins with a person filing an international application. Then an international search is conducted by the International Authorities, which is one of the major patent offices appointed by the PCT Assembly. The International Authorities generates an international search report, which lists citations of published documents that may affect whether or not the invention in the international application can be patented. In addition to the search report, the International Authorities produces a written opinion on whether or not the invention is patentable.
Once the applicant receives the ISA's international report and written opinion, the applicant can either withdraw or proceed with the application. If the application is not withdrawn, the application and the international search report are published by the International report. The written opinion is simply for the benefit of the applicant and is not published.
Advantages to the Procedures Provided by the PCT
The procedures set forth by the Patent Cooperation Treaty provide various advantages to inventors, patent offices, and the general public. Thanks to the international search report and written opinion that accompany an international patent application, patent offices can reduce or virtually eliminate the work involved in searching and examining patent application. Also, because the international search report is published with the international application, it gives third parties a better position to formulate an opinion about whether or not the invention can be patented.
The applicant has up to 18 months more (than if he or she used a procedure outside the PCT) to decide whether to seek patent protection in foreign countries and take the necessary steps to seek foreign protection (such as appointing local patent agents, making translations, and paying national fees). In addition, when an applicant uses the application set forth by the PCT, the designated Office can't reject it on formal grounds during the national processing phase.
Getting Legal Help
If you have questions about the Patent Cooperation Treaty, or would like help determining if your invention qualifies for patent protection and filing a patent application, you may want to contact an experienced patent attorney in your area.
The PCT is an international treaty, administered by the World Intellectual Property Organization(WIPO), between more than 140 Paris Convention countries. 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. The granting of patents remains under the
control of the national or regional patent Offices in what is called the “national phase”.
control of the national or regional patent Offices in what is called the “national phase”.
PCT applicants generally pay three types of fees when they file their international applications:
- International filing fee of approximately 1,450 US dollars (depending on the applicable exchange rate),
- Search fee, which can vary from approximately 410 to 2,400 US dollars, depending on the International Searching Authority chosen, and a
- Small transmittal fee which varies depending on the receiving Office.
A 90% reduction on the international filing fee, the supplementary search fee and the handling fee applies to nationals of LDCs and residing in an LDC. If there are several applicants, each must satisfy those criteria. For more details, including the list of the PCT Contracting States the nationals and residents of which are eligible for such fee reductions, please refer to: Applicability of 90% Reduction in Certain PCT Fees.