PATENT CO-OPERATION TREATY

Introduction

The Patent Co-Operation Treaty (PCT) is an international treaty administrated by the World Intellectual Property Organization (WIPO). 

It is a legal agreement for filing Patent applications and seeking patent protection in multiple countries at a time. A 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 a patent is in the hands of the National or Regional Patent Office of the Contracting Country, where the applicant is seeking patent protection.

Phases Of PCT Progress

1) PCT APPLICATION

2) INTERNATIONAL PHASE

3) NATIONAL PHASE

1. 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 a local application, the applicants have to file the PCT application within 12 months from the prior date.

It is to be filed in the PCT office of the same host country. However, if permitted by the 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 country has its own selected “INTERNATIONAL SEARCH AUTHORITY” (ISA) to perform the International Search Report (ISR) and provide a written opinion of the National or Regional Office (ISA).

2.2 INTERNATIONAL APPLICATION:

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

2.3 SUPPLEMENTARY INTERNATIONAL RESEARCH (OPTIONAL):

This step is optional in nature, however, if carried out then it gives a detailed overview of the prior art. It is to be filed within 22 months from the 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. This has to be done within 22 months from the 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 files a demand for the same. 

3. NATIONAL PHASE:

With the end of the international phase, a new phase – National Phase starts its way. Based on the International Preliminary Report on Patentability, the National or Regional Patent Office evaluates the chance to grant a patent to the inventors.

Once entered in this phase, it has to go through the Patent Law and practices of the countries wherein the Applicant seeks patent protection. The 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 are non-refundable if patentability is not granted in the National phase.

Though the process may seem time-consuming and uncertain, it is surely profitable in the long run.