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Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is a Global Protection Treaty administered by WIPO. The Patent Cooperation Treaty aims to provide a simplified and less costly method of preserving the rights to file a patent application in member countries. It seeks to achieve this by providing what is known as a PCT application. The Patent Cooperation Treaty has 128 member countries (as of 27 July 2005).

The PCT Application Process

A PCT application is NOT a primary patent application. Before a PCT applicat ion can be of use, a priority patent application for an invention must be filed in the inventor's home country. After this priority date is obtained by the initial filing of the application, a PCT application may be used to preserve the right to file the same invention in all Patent Cooperation Treaty member countries. Given that PCT applications claim a priority date from the initial patent application, the PCT application acts as a placeholder, reserving the patent rights in member states designated on the application.

An inventor can designate as many member states as he desires in which to preserve his filing rights or, after 1/1/2004, all member countries are automatically chosen.

In order to obtain protection in each individual country the inventor chooses, it is necessary for the PCT to be converted (filed) in the national patent offices of the selected countries where the invention will be subject to an examination in order to meet the national requirements for novelty, obviousness etc. The administrative tasks, including translation if necessary and the fees associated with lodging patent applications in that country, must be complied with.

The PCT application can therefore act as a way of delaying the costs of filing in multiple national patent offices, until the inventor has decided whether it is worthwhile seeking protection in many countries.

EXAMPLE: An Indian national files a patent application on the 1/1/2003 at the Indian Patent Office. On the 1/1/2004 he then files a PCT application with WIPO designating Brazil, Egypt and China as contracting states. After deciding that there are commercial opportunities for his invention in Brazil, the applicant decides to file in Brazil six months after filing a PCT application (1/7/2004). The filing date for the Brazilian application will claim priority from the date that it was first filed in India, i.e. 1/1/2003. The 20 year term of patent protection (if granted in Brazil) will extend from the date of the PCT application (from 1/1/2004 to 1/1/2024). The inventor still has up to 12 months remaining in order to decide whether or not to file in Egypt and China.

Priority that stems from a PCT application can only be given in those countries which are designated on the application. In the example above, the inventor would not be able to claim the priority date of 1/1/2003 in Japan, as Japan was not specified as a designated country on the PCT application. Ho wever, under the changes to the PCT process which came into force in January, 2004, there is no longer a need for countries to be designated on the application as all member countries will automatically be chosen.

A PCT application is usually filed at any point in time up to 12 months from the initial or priority filing in the home country. At a period of 18 months after the initial application, the PCT application is published. It used to be that at 20 months after the initial filing date, the applicant must have entered the national phase of the application process in the designated states or lose his right to file claiming the earlier priority date. However, this period could be extended by a further 10 months if the applicant requested an examination or preliminary report. The examination gives an inventor a preliminary and non-binding opinion on the patentability of the claimed invention. He is then able to determine whether or not he should proceed with the conversion of the PCT application into numerous, individual national patents.

Changes to the PCT Process

We are currently in a transitional period where changes to the PCT process are underway. It is now becoming possible in some countries for inventors to claim priority for 30 months after the initial filing, without having to request an examination at 20 months. This has not yet been implemented in all PCT member countries, as it requires each member country to change their national patent laws to reflect this extension of time. There is now one set international filing fee that applies to all applications, regardless of the number of countries that have been designated by the applicant.

Benefits of the PCT Process

Under the PCT process, an applicant can delay the expenses of filing for up to 30 months, while evaluating the desirability of filing in a particular country or raising the funds necessary to do so. The applicant also has the peace of mind of knowing that the application cannot be rejected on 'prior art' that has emerged in the time between the applicant making a PCT application and filing a national application.

The information contained in this page was believed to be correct at the time it was collated. New patents and patent applications, altered status of patents, and case law may have resulted in changes in the landscape. CAMBIA makes no warranty that it is correct or up to date at this time and accepts no liability for any use that might be made of it. Corrections or updates to the information are welcome. Please send an email to info@bios.net.

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