Patent Cooperation Treaty
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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 (see Accession section below for current membership information). A patent application filed under the PCT is called an international application or PCT application.
A single filing of an international 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 with 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 Examination Authority (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. The PCT does not lead to the grant of an "international patent", which does not exist.
The States party to the PCT, i.e. the Contracting States,[1] constitute the International Patent Cooperation Union.[1]
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[edit] History
The Washington Diplomatic Conference on the Patent Cooperation Treaty took place from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed in Washington at the very end of the conference, i.e., on June 19, 1970. The Treaty entered into force on January 21, 1978 initially with 18 Contracting States. The first international applications were filed on June 1, 1978. The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.
[edit] Accession
Any Contracting State to the Paris Convention for the Protection of Industrial Property can become a member of the PCT.
A majority of the world's countries are signatories to the PCT, including all of the major industrialised countries (with a few exceptions, including Argentina and Taiwan). As of March 2, 2007, there were 137 Contracting States to the PCT. The PCT will enter into force on March 18, 2007 for the Kingdom of Bahrain, and on May 28, 2007 for the Dominican Republic, the 137th Contracting State. Following the independence of the Republic of Montenegro, Montenegro deposited, on December 4, 2006, a declaration that the PCT continues to be applicable, as from June 3, 2006, to the territory of Montenegro,[2] thus adding one country to the Contracting States.
[edit] Procedure
The main advantages of the PCT procedure, also referred to as the international procedure, are the possibility to delay as much as possible the national or regional procedures, and the respective fees and translation costs, and the unified filing procedure.
[edit] Filing
The first step of the procedure consists in filing an international (patent) application with a suitable patent office, called the Receiving Office (RO). This application is usually called an international application since it does not result in an international patent nor in a PCT patent (which do not exist). The international application needs to be filed in one language only (though 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 international filing date is accorded.
On filing of the international application, all Contracting States are automatically designated.[3][4]
[edit] Search
A search or international search is then made by an authorized International Searching Authority (ISA) to find out the most relevant prior art documents regarding the claimed subject-matter. This results in an International Search Report (ISR), together with a written opinion regarding patentability.[5]
The ISR is normally 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 international 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)" (commonly abbreviated "IPRP Chapter I") 30 months after the filing date or the priority date if any.[6]
[edit] Publication
18 months after the filing date or the priority date if any, the international application is published by the International Bureau (IB) of WIPO, based at Geneva, Switzerland, in one of the eight "languages of publication": Arabic, Chinese, English, French, German, Japanese, Russian and Spanish.[7] There is an exception to this general rule however: if 18 months after the priority date, the international application only designates the United States, then the application is not automatically published.[8]
[edit] Optional examination
Afterwards, an international preliminary examination may optionally be requested ("demanded"). The "international examination" is achieved by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examination Report (IPER). Since 2004, the IPER now bears the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter II").[9]
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).
[edit] Subject matter
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:
- "Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. (...)"
[edit] National and regional phases
Finally, at 30 months[10] from the filing date of the international application or from the priority date if any, the international phase ends and the international application enters in national or 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 priority date. National and regional phases can also be started earlier on the express request of the applicant.[11]
If the entry into national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.[12]
[edit] Trivia
The millionth international application (or PCT application) was filed at the end of 2004.[13]
[edit] References
- ^ a b Article 1(1) PCT
- ^ PCT Newsletter, Application of the Patent Cooperation Treaty in Montenegro, January 2007 (No. 01/2007), page 1.
- ^ Applicable as from January 1, 2004
- ^ Germany, Japan, the Republic of Korea and the Russian Federation can be excluded from this all-inclusive designation if priority is claimed from an earlier national filing in the state concerned.
- ^ The written opinion is only established by the International Searching Authority (ISA) for international applications filed on or after January 1, 2004.
- ^ Rule 44bis.1(b) PCT
- ^ Rule 48.3 PCT
- ^ Article 64(3) PCT, PCT Reservations, Declarations, Notifications and Incompatibilities
- ^ Rule 70.15(b) PCT
- ^ The 30-month time limit to enter the national phase is not applicable to all countries. A small number of countries still request the entering of the national phase under Chapter I (i.e., if the preliminary examination is not demanded or not demanded in time) at 20 months.
- ^ Article 20(3) PCT or Article 40(2) PCT
- ^ Article 24(1)(iii) PCT
- ^ WIPO web site, PCT One Million and Counting
[edit] Further reading
- Cees Mulder, The Cross-Referenced Patent Cooperation Treaty, updated yearly, Helze Publisher [1].
- Peter Watchorn and Andrea Veronese, "PCT Procedures and Passage into the European Phase", Kastner AG, 2006, "ISBN-13: 978-3-937082-56-1"
[edit] See also
- Computer programs and the Patent Cooperation Treaty
- European Patent Organisation (EPO)
- Eurasian Patent Organization (EAPO)
- Intellectual Property
- Patent Law Treaty (PLT)
- PCT Gazette
- PCT Newsletter
- Substantive Patent Law Treaty (SPLT)
- World Intellectual Property Organization (WIPO)
[edit] External links
- Patent Cooperation Treaty resources on the WIPO web site
- Patent Cooperation Treaty: html, pdf
- Regulations: html, pdf (also: History of the PCT Regulations - June 19, 1970 - October 12, 2006)
- Applicant's Guide
- Glossary
- Administrative Instructions (pdf)
- Receiving Office Guidelines (pdf)
- International Search and Preliminary Examination Guidelines (pdf)
- Records of the Washington Diplomatic Conference on the Patent Cooperation Treaty, 1970
- Regularly updated list of Contracting States (pdf)
- Protecting your inventions abroad: Frequently asked questions about the Patent Cooperation Treaty (PCT) on the WIPO web site
- Statistics about international patent applications filed in 2006
