At IP Consultores, we think understanding central Intellectual Property concepts allows a better knowledge of Intellectual Property Systems. If we pretend to cultivate an equitable culture of Intellectual Property Rights, people must broadly understand Intellectual Property Systems.
In our previous post, we reviewed some concepts and rules about patents recognized by the Paris Convention for the Protection of Industrial Property. This time, we will check some related to the Patent Cooperation Treaty (from now on called “the PCT”).
The PCT is an international procedural treaty that allows seeking patent protection for an invention simultaneously in each Contracting State by filing an “international patent application.” It is one of the essential advantages of a PCT patent application.
Background of the PCT
The Patent Cooperation Treaty was concluded on 19 June 1970, at the end of the Washington Diplomatic Conference on the Patent Cooperation Treaty carried out in Washington, USA.
Among the signatory Contracting States were Algeria, Brazil, Canada, Denmark, Federal Republic of Germany, Finland, Holy See, Hungary, Ireland, Israel, Italy, Japan, Norway, Philippines, Sweden, Switzerland, United Arab Republic, United Kingdom of Great Britain and Northern Ireland, United States of America, and Yugoslavia.
The PCT entered into force on 24 January 1978, according to Article 63. Nowadays, this international agreement has 157 Contracting States.
General Provisions
The PCT contents include a Preamble, Introductory Provisions, and eight Chapters: I) International Application and International Search, II) International Preliminary Examination, III) Common Provisions, IV) Technical Services, V) Administrative Provisions, VI) Disputes, VII) Revision and Amendment, and VIII) Final Provisions.
According to Article 1, the Contracting States constitute the International Patent Cooperation Union, whose primary goal is “cooperation in the filing, searching, and examination of applications for the protection of inventions, and for rendering special technical services.”
Among the administrative bodies settled by the PCT are the Assembly of the Union (where every Contracting State of PCT is a member according to Article 53), the Executive Committee of the Assembly (Article 54), the International Bureau (Article 55), and the Committee for Technical Cooperation (Article 56).
Moreover, Article 58 sets forth a special kind of rules named Regulations concerning matters referred to in the Treaty expressly, administrative requirements, and “any details useful in the implementation of the provisions of [the] Treaty.”
The PCT patent procedure
If we pretend to know the PCT’s international procedure, we could split it into two broad phases: 1) the international phase and 2) the national phase.
The international phase entails five stages. Three of them are obligatory, and the other two are optional: 1) filing of the international application, 2) international search, 3) international publication, 4) supplementary international search, and 5) international preliminary examination.
The national phase begins after the WIPO’s International Bureau issues the preliminary examination report and the Written Opinion on the invention’s patentability. Then, the applicant must prosecute a patent procedure before the designated or elected Intellectual Property Office.
The International Phase
The WIPO, in its PCT Applicant’s Guide, explains that the International Phase consists of five stages: 1) the filing of the international application, 2) the international search, 3) the international publication, 4) the supplementary international search (optional), and 5) the international preliminary examination (optional).
Filing of the international application
Anybody who is a national or resident of a PCT Contracting State can file an international patent application before a “Receiving Office” if she fulfills the PCT formality requirements and pays the international filing fee. The “Receiving Office” could be any national or regional patent Office or the WIPO’s International Bureau.
Any national or resident of a country that belongs to the ARIPO Harare Protocol, the OAPI Bangui Agreement, the Eurasian Patent Convention, or the European Patent Convention is entitled to file an international patent application with any of these regional patent Offices.
After the Receiving Office has reviewed the international patent application, it must forward the application to the patent office, which acts as the “International Searching Authority.”
International Search
The “International Searching Authority” (ISA) must do “a high-quality search of the relevant patent documents and other technical literature in those languages in which most patent applications are filed.”
In an International Search Report are the results, which present relevant prior art and a Written Opinion on the invention’s potential patentability. The applicant receives both documents and can withdraw the application if appropriate.
The PCT Contracting States have appointed as International Searching Authorities the following national offices: Australia, Austria, Brazil, Canada, China, Chile, Egypt, Finland, India, Israel, Japan, the Philippines, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, and the United States of America.
Furthermore, some regional patent Offices are considered International Searching Authorities, such as the Eurasian Patent Office, the European Patent Office, the Nordic Patent Institute, and the Visegrad Patent Institute.
International Publication
The WIPO’s International Bureau publishes the international application and the International Search Report after 18 months from the earliest filing date. The content of the international application, the International Search Report, and the Written Opinion disclose through WIPO’s online database Patentscope.
Then, the International Bureau issues the International Preliminary Report on Patentability grounded on the Written Opinion issued by the International Searching Authority and communicates these documents to the designated office. Among the languages of publication are Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish.
Supplementary International Search (optional)
The applicant can choose another International Searching Authority to do a Supplementary International Search before the expiration of 22 months from the priority date. This Supplementary International Search works to find relevant documentation in the language Supplementary International Searching Authority specializes in.
Supplementary International Search aims to decrease the likelihood of other documents coming to light when the international patent application enters the national phase.
International Preliminary Examination (optional)
The applicant can demand an International Preliminary Examination from an “International Preliminary Examining Authority” (IPEA) and an additional patentability analysis from the Written Opinion.
According to Article 33, the international preliminary examination’s objective “is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.”
Following Chapter II of the PCT, the International Preliminary Examining Authority issues an International Preliminary Report on Patentability. Any patent applicant who requests this preliminary report must pay two fees: 1) to the International Bureau and 2) to the International Preliminary Examining Authority.
The National Phase
This PCT procedure’s phase is “the procedure before the designated Offices.” The applicant is entitled to continue with the national patent process before each designated office until the end of the thirtieth month from the priority date. It is necessary to pay a fee when the filing enters the national phase.
At IP Consultores, we think that although the knowledge of Intellectual Property Rights is one of the main aspects of a culture of innovation, it is also necessary that the different operators of the Intellectual Property System contribute to rooting the innovative culture among people.
*** This post series does not constitute legal advice. Instead, it only pretends to contribute to understanding the central concepts of International Patent Law. Please get in touch with us for legal advice on this or any related topic.
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