PCT APPLICATION PROCEDURE

PATENT CO-OPERATION TREATY (PCT) is an international treaty administrated by WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO). It is a legal agreement for filing Patent application and seeking patent protection in multiple countries at a time. PCT simplifies the patent application filing for the applicant or inventors, making it more economical and efficient. At present, there are 152 signatory or contracting countries, providing worldwide patent filing coverage.

However, it is important to note that PCT only simplifies the patent application process but the ultimate decision of granting patent is in the hands of the National or Regional patent office of the Contracting countries, where the applicant is seeking patent protection.

The process of PCT is mainly divided into 3 phases:

  1. PCT APPLICATION
  2. INTERNATIONAL PHASE
  3. NATIONAL PHASE

PCT APPLICATION PROCESS

1.1 PRIOR PCT APPLICATION:

Filing a local application in the home country i.e. in the National or Regional patent office of the applicant.

1.2 PCT APPLICATION:

After successful completion of filing local application, the applicants have to file the PCT application within 12 months from prior date.

It is to be filed in the PCT office of the same host country. However, if permitted by national law of the country, the applicant may file the PCT application directly with the receiving office of WIPO.

2.1 INTERNATIONAL SEARCH REPORT & WRITTEN OPINION

Each contracting countries has its own selected “INTERNATIONAL SEARCH AUTHORITY”(ISA) to perform the International Search Report (ISR) and provide with a written opinion of National or Regional office (ISA)

2.2 INTERNATIONAL APPLICATION

After receiving the ISR, the applicants have an option to continue with the PCT application or not. In case, if the applicant refuses to continue with the PCT application, a written opinion in the form of International Preliminary Report on Patentability will be open for public inspection, within 30 months from prior date.

2.3 SUPPLEMENTARY INTERNATIONAL RESEARCH (OPTIONAL)

Though this step is optional in nature, but if done gives a detail overview of the prior art. It is to be filed within 22 months from prior date.

The reports of the supplementary international research are to be received within 28 months from prior date

The applicant can make the necessary changes in the application on the basis of the search report and written opinion.  But this has to be done within 22 months from prior date

2.4 INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY

Within 28 months from the date of filing the (first) local application the applicant will receive the International Preliminary Report on Patentability from IPEA, if and only the applicant file a demand for the same.

3 NATIONAL PHASE

With the end of international phase a new phase – National Phase start its way. On the basis of International Preliminary Report on Patentability, the national or regional patent office evaluates the chance to grant patent to the inventors.

Once entered in this phase, it has to go through the patent law and practices of the countries, it seeks patent protection. This applicant has 30 months from the date of filing the (first) local application, to decide the countries where the applicant wants to seek the patentability.

Before entering the national phase the applicant has to pay the required fees which is non refundable if patentability is not granted in the National phase.

Though the process may seem time consuming and uncertain but it is surely a profit in long run.