The Patent Cooperation Treaty (PCT)

 

The PCT is administered by The International Bureau of the World Intellectual Property Organization (WIPO), a special United Nations agency aimed at simplifying and enhancing the protection of IPR.

 

Although being able to claim priority from an earlier patent application in accordance with the Paris Convention, the desire to obtain patent protection in many different countries still requires, in principle, the filing and prosecution of separate, national patent applications. The Patent Cooperation Treaty (PCT) simplifies the various national procedures for patent application filing and prosecution.

 

When availing of the PCT system, an applicant needs initially only to file a single, updated patent application (PCT-application). In the PCT-application the applicant can list (designate) all the PCT member states in which patent protection should be secured. More than 115 countries are members of the PCT.

 

WIPO receive the updated patent application (PCT-application) and checks that it meets the formal requirements. WIPO also publishes the patent application 18 months after the filing of the earliest priority patent application.

 

One of the major patent offices in the world is then appointed the International Searching Authority and performs the novelty search. When the novelty search has been performed the result of the search is communicated to the applicant.

 

Based on the result of the novelty search, the applicant may continue the prosecution of the updated patent application at the national patent offices of the countries originally designated.

 

More likely, the applicant will ask for a preliminary examination of the patentability of the invention disclosed in the PCT-application. This task can also be handled by the patent office that performed the novelty search. This time the office is acting as International Preliminary Examination Authority on behalf of WIPO. The result of the preliminary examination is the issuance of a preliminary examination report. This report is sent to the national patent offices in which the applicant wants to obtain patent protection.

 

Finally, when the PCT-application is filed with a national patent office no later than about 30 months after the filing of the earliest priority patent application, each national patent office can start the examination of the patent application by studying the novelty search drawn up by the International Searching Authority and the preliminary examination report drawn up by the International Preliminary Examination Authority.

 

This means that the applicant does not need to have a separate search performed at every national patent office, which is a substantial saving in both cost and time involved. However, each national patent office is free to perform their own novelty search and examination of patentability. The report drawn up by the International Preliminary Examination Authority is not binding for the national patent offices.

 

In some cases a regional patent application rather than a national patent application is filed at the end of the PCT-phase. This is the case in Europe, where the European Patent Convention (EPC) determines the legal framework for patent protection.

 

More info: www.wipo.int