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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. 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 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). 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. 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 in order 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 Washington Diplomatic Conference on the Patent Cooperation Treaty was held in Washington from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed on the last day of the conference on June 19, 1970. The Treaty entered into force on January 24, 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.
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 June 18, 2012, there were 146 contracting states to the PCT. Brunei Darussalam became the 145th contracting state on April 24, 2012 and Panama became the 146th contracting state on June 7, 2012. The PCT will enter into force for Brunei Darussalam on July 24, 2012, and for Panama on September 7, 2012.
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.
An international patent application (also called PCT application, as mentioned above) has two phases. 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. 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".
The first step of the procedure consists in filing an international (patent) application with a suitable patent office, called a Receiving Office (RO). This application is usually called an international application or simply a PCT application since it does not result in an international patent nor in a PCT patent (both of which do not exist). The international 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 international filing date is accorded. 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 an international patent application at the International Bureau in Geneva.
Upon filing of the international application, all contracting states are automatically designated. Subject to reservations made by any contracting state, an international patent application fulfilling the requirements of the treaty and accorded an international filing date has the effect of a regular national application in each designated state as of the international filing date, which date is considered to be the actual filing date in each designated State. However, in some countries, the prior effect of an international application filed outside such countries may be different from the prior effect of a local national application. For example, in the United States, an international patent application filed outside the United States has a different prior art effect than a direct US application.
|International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA)|
|1. Austrian Patent Office (AT).|
|2. Australian Patent Office (AU).|
|3. National Institute of Industrial Property (BR).|
|4. Canadian Intellectual Property Office (CA).|
|5. State Intellectual Property Office of the People’s Republic of China (CN).|
|6. European Patent Office (EP).|
|7. Spanish Patent and Trademark Office (ES).|
|8. National Board of Patents and Registration of Finland (FI).|
|9. Israel Patent Office (IL) (as of 1 June 2012).|
|10. Japan Patent Office (JP).|
|11. Korean Intellectual Property Office (KR).|
|12. Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation) (RU).|
|13. Swedish Patent and Registration Office (SE).|
|14. United States Patent and Trademark Office (US).|
|15. Nordic Patent Institute (XN).|
|Note 1: All International Searching Authorities are also International Preliminary Examining Authorities.|
|Note 2: The Egyptian Patent Office was appointed as ISA and IPEA on September 25, 2009. The appointment will become effective when it is ready to begin operations.|
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.
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). However, long delays may occur,[vague] even to the point where the ISR is not received by the 30/31-month national phase deadline.
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, or IPRP Chapter I), within 30 months of the filing date or a priority date, if any. If the ISR is not in English, it is translated into English for publication. A designated Office may require a translation of the IPRP Chapter I into English.
The international search report can help the applicant to decide whether it would be worthwhile to seek national protection, and if so, in how many countries, as it costs fees and other expenses, including costs of translation, to enter the national phase in each country. Yet another advantage of filing an international 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.
In addition to the compulsory international search, one or more optional supplementary international searches may also be carried out by participating International Searching Authorities, upon request by the applicant and payment of corresponding fees. The purpose is to reduce the likelihood of seeing new prior art being cited in the subsequent national phases. 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". In 2009 and 2010, the demand for supplementary international searches was relatively low.
18 months after the filing date or the priority date, the international 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. There is an exception to this rule, however. If 18 months after the priority date, the international application designates only the United States, then the application is not automatically published.
An international preliminary examination may optionally be requested ("demanded"). 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". 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"). The filing of a demand for international preliminary examination, which must be done within a time limit, is subject to the payment of a "handling fee" for the benefit of the International Bureau and a "preliminary examination fee" for the benefit of the IPEA. The cost of filing a demand varies depending on the IPEA used by the applicant.
If the written opinion established by the International Searching Authority (ISA) is positive, "there is little value to be obtained from filing a demand". 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." There are many advantages, such as cost and effort savings ("as well as possibly shortened pendency/faster grants"), in receiving a favorable IPRP Chapter II, i.e. a favorable report following an international preliminary examination. 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".
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. They are kept in the file of the international application and, in the case where no demand is filed, forwarded to the designated offices, which are free to require a translation of the informal comments.
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:
Finally, at 30 months from the filing date of the international application or from the earliest priority date of the application if a priority is claimed, the international phase ends and the international 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.
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.
The millionth international application (or PCT application) was filed at the end of 2004, whereas the two millionth application was filed in 2011. The first ever decline in the number of filed PCT applications in an over 30-year history occurred in 2009, with a 4.5 percent drop compared to 2008. WIPO provides regular updated statistics on its website.