Patent Cooperation Treaty

Introduction

The Patent Cooperation Treaty - PCT is a multilateral treaty, entered into force in 1978. Through PCT, an inventor of a member country (contracting state) of PCT can simultaneously ensure priority for his/her invention in all/any of the member countries, without having to file separate application in the countries of interest, by designating them in the PCT application. India joined the PCT on December 7, 1998.

Coordinating the activities of PCT

All activities related to PCT are coordinated by the World intellectual Property Organisation (WIPO) situated in Geneva.

Need for PCT

In order to protect your invention in other countries, you are required to file an independent patent application in each country of interest; in some cases, within a stipulated time to obtain priority in these countries. This would entail a large investment, within a short time, to meet costs towards filing fees, translation, attorney charges etc. In addition you are making assumption that your invention will lead to commercial benefits in these countries, This assumption, due to the short time available for making the decision on whether to file a patent application in a country or not, may not be well founded.

Inventors of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate applications in the countries of interest; thus saving the initial investments towards filing fees, translation etc.

Handling of Patent applications under PCT

The patent office or any other office designated by each Contracting State becomes a 'receiving office' for receiving patent applications. These applications are then transmitted to WIPO for administrative actions. At WIPO the patent application is referred to International Searching Authorities (ISA) which are usually the patent offices, appointed to carry out patent search on a global basis. In case the receiving office is also an ISA, a separate referral is not required. There is also a provision to get a patent application examined by International Preliminary Examining Authorities which, in most cases, are the same as the ISA.

Meaning of delayed processing of the application by the national phase or the regional phase

A search report on the patent application filed with a receiving office is received by the applicant/ inventor 16 months after the date of submitting the application in the receiving office. The application and the search report are published by the International Bureau of the WIPO 18 months after the priority date. The original application is then sent to designate offices indicated in the application. Within two months of this, i.e. by the 30th month, the applicant will have to formally apply to the patent offices of these countries for grant of patents by paying official fees and completing other formalities stipulated by these offices. In case translated copies of the application are required, the same have to be furnished by the applicant. In spite of submitting requests for grant of patents in the designated countries in the 30th month after the priority date, the priority in these countries is the same as the date of filing the original PCT application.

If the applicant / inventor has requested for an examination report, the report is usually received by the applicant / inventor about 28 months after the priority date. Within two months of this, the applicant / inventor will have to formally apply for grant of patents in the designated countries. The priority of application is maintained in the designated countries.

Cost of filing a PCT application

For schedule of fees refer Tariffs Section.