Patent Co-operation Treaty (PCT) provides a simple and efficient process to obtain a patent in multiple countries on the basis of a single patent application filed with the domestic patent office, says Parimal Kowtal.

 

In June 1970, the Patent Co-operation Treaty (PCT) was signed in Washington, DC, and was operational in June 1978 with 18 Member Countries or Contracting States. The PCT system uses interchangeably the term PCT Country and PCT Contracting State to identify the member country. At present there are about more than 150 contracting states, almost covering the entire globe in implementing the PCT patent filing system. The associated staff of World Intellectual Property Organization (WIPO) is responsible for coordination and managing the PCT system internationally, generally referred as International Bureau (IB).

 

Since December 1998 India (IN) is a Contracting State (member country) of World Intellectual Property Organization (WIPO) and compliant with Patent Cooperation Treaty (PCT).

 

The PCT is an agreement for international co-operation for providing a simple and efficient patent filing process to obtain a patent in multiple countries on the basis of a single patent application filed with the domestic national or regional patent office. A convenience to the patent applicant and the respective patent office. The exclusive patent grant decision is with the respective national or regional patent filing office where the geographical patent grant is sought for.

 

For example, if an Indian patent applicant residing in Mumbai (India) wants a patent grant in Australia (AU) and the United States of America (US), the applicant has to process the patent application through the Indian Patent Office (IPO), Mumbai, India. The Australian Patent Office (APO) and United States Patent and Trademark Office (USPTO) have exclusive rights to grant or refuse the patent application filed.

 

In the traditional patent filing system or direct route system adopted by the member states of the Paris Convention, separate patent applications are to be filed at the same time or within 12 months from the date filing the first patent application in all the member countries of the Paris Convention where the patent protection is sought. Under Paris convention, the inventor of the patent application needs to approach the individual domestic national or regional patent office where the patent is to be filed, involving a tedious time consuming process at a high cost leading to frustration.

 

The time frame for patent application grant process through the PCT system is of about 24 to 30 months comprising of International Search Report (ISR) on the patent-ability of the invention. The optional request for Supplementary International Search Report and International Preliminary Examination Report (IPER) helps the inventor in knowing the novelty, inventive step and industrial applicability of the invention.

 

WIPO facilitates the PCT online information services and tools portal (www.wipo.int) which provides patent search and retrieval information. The guided portal authorises the applicant in filing, managing and monitoring the patent application at various stages.

 

Patent application procedure

 

A patent application filed (domestic or international) may be granted and enforced in the geographical area of the country or region where the patent grant is sought in accordance to prevailing national or regional patent laws of the country or the region.

 

While most of the countries have adopted Paris Convention for protection of intellectual property, the member countries of World Trade Organization (WTO) are covered by the multilateral agreements of the minimum standards of protection of the intellectual property under the Trade Related Aspects of Intellectual Property Rights (TRIPS) provided by the individual member country.

 

The Regional Patent Office is a consortium of a group of countries where the Minimum Standards of Intellectual Property Protection Laws are agreed upon by the members or contracting states in the group, eg, African Regional Intellectual Property Organization (ARIPO) and European Patent Office (EPO).

 

The International patent grant application is filed through the domestic national or regional patent office where the international patent grant is sought for the respective country or the region under the Patent Co-operation Treaty (PCT).

 

Depending on the applicant, the PCT patent application (international) has to be filed with the domestic national patent office in the prescribed format within 12 months from the date of filing or priority date for the designated country or region where the patent protection is sought i.e. country or region other than the domestic nation. In case of regional consortium, it is through the regional office.

 

Under the PCT system, the appointed competent International Search Authority (ISA) performs the international searches and provides a written opinion, an International Search Report (ISR), about the patent-ability of the invention. The search report is available in the stipulated period of 16 months from the date of filing or priority date.

 

The inventor of the PCT application can file amended PCT application and further opt for a Supplementary International Search Report (SISR) for assessment of the amended PCT application or disclosure of the PCT application filed in the public domain of the PCT system as prescribed after 18 months from the priority date or can opt for disclosure in the public domain, wherein the PCT application is considered for patent grant process.

 

In case the applicant opts for Supplementary International Search Report of the amended PCT application, the request has to be made within 19 months. The demand has to be filed within 22 months of priority date by paying the requisite additional fees as prescribed. Appointed under PCT system the International Preliminary Examining Authority (IPEA) performs the search process and the International Preliminary Examination Report (IPER) is made available in about 28 months from the date of filing or priority date. The IPER is also known as Supplementary International Search Report (SISR).

 

The PCT procedure ends approximately after about 30 months period from the date of filing or priority date and the patent application enters into the national phase. The applicant can pursue the patent grant protection with the national or regional patent office where the patent protection is sought.

 

Any resident or national of PCT contracting state is entitled to file the international patent application for the invention. In case of more than one applicant from various countries or geographical locations, anyone of the applicant needs to fulfill the criteria.

 

Parimal Kowtal is visiting faculty (IPR) in Department of Electronic Science, Savitribai Phule Pune University, Pune. For details, contact him on email: parimal.kowtal@gmail.com