This article is written by Monesh Mehndiratta, a law student at Graphic Era Hill University, Dehradun. The article deals with the Patent Cooperation Treaty and gives insight into its history, the process of filing a PCT application, and its benefits. It also describes the fees paid in the whole procedure and the requirements of the application. 

It has been published by Rachit Garg.

Introduction

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Yes, the creations of a human mind or intellect like music, art, paintings, cinematograph films, inventions, etc. can be protected under law. These are termed intellectual properties, and the works are classified under different categories like copyright, patent, trademark, design, etc.  The creators are given certain rights over these properties, which are known as intellectual property rights (IPR). However, in order to seek its protection, the work first has to be registered with the authorities of the country in which the protection is sought. 

Every country has its own laws regarding the registration and protection of intellectual property. Inventions are covered under the category of patents, so if a person wants to protect their inventions, then a patent must be filed. What if a person wants to seek the protection of his inventions in multiple countries at once? Is it possible? Yes, it is. With the help of the Patent Cooperation Treaty, this tedious task has become easy, and now you can apply to multiple countries for a patent with just one application. 

We live in a globalized world where knowledge, technology, and products are increasingly shared across borders. This means that inventors, entrepreneurs, and businesses must navigate a complex system of laws and regulations to protect their intellectual property (IP) when operating in multiple countries. The Patent Cooperation Treaty (PCT) is one of the key international agreements designed to simplify the process of obtaining patent protection in multiple countries. In this article, we will study the treaty in detail and explore its history, purpose, and object. The article will further deal with the requirements, advantages, and other necessary details for filing the application for a patent under the treaty. 

What is the Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international agreement administered by the World Intellectual Property Organization (WIPO) that deals with the protection of inventions internationally. It was signed by over 150 countries in 2000 and currently has over 180 members. The PCT makes it easier for patent applicants to seek protection for their inventions in multiple countries.

Under the PCT, patent applicants can file a single international patent application, known as a PCT application. This application is then evaluated by a single patent office (designated as International Search Authority or ISA), and the applicant can choose to extend the application to any of the countries that are members of the PCT. The PCT also provides a unified system for international patent search and examination, which makes the process of obtaining patent protection more efficient and cost-effective. The treaty has been able to solve the issue of confusion and the tiring process faced by applicants seeking protection in different countries. With a unified and easy process, the applicants are at ease in filing applications for patents in multiple countries to seek protection over their inventions. 

History of the PCT

The Patent Cooperation Treaty was signed in 1970 at the Washington Diplomatic Conference held in Washington. Initially, the treaty was signed by 18 contracting states, but today it has 157 contracting states as members. The treaty was amended in 1979 and modified twice, in 1984 and 2001, respectively. The original goal of the PCT was to simplify and streamline the process of obtaining patent protection in multiple countries. Over time, the PCT has evolved to become a key tool for innovators and businesses seeking to protect their intellectual property and expand their operations internationally. Earlier, a patentee could only seek protection for his inventions in one country, and another person from a different country could make a similar invention and get it registered under the laws of that country. This led to confusion at the international level. However, the issue has been resolved by the treaty. 

The PCT has gone through several revisions over the years. In 2000, the PCT was amended to include provisions for international search and examination to extend the scope of the treaty. In 2003, the amendment was further revised to introduce a unified application procedure and reduce the number of documents required for filing. In 2011, the PCT was further amended to introduce a streamlined application procedure and to reduce the fees associated with filing. Over the years, the treaty has been revised as per the needs of society to make it easier for applicants worldwide to reap its benefits and make use of it as much as possible.

Parties to the Treaty

Currently, there are over 150 countries that are members of the PCT. These include most of the major industrialized countries, like the United States, Canada, the United Kingdom, Germany, France, Japan, China, India, etc. It also includes many developing countries, such as Brazil, Mexico, South Africa, Indonesia, etc. However, countries like Russia, Israel, Kenya, Argentina, etc. are not members.

According to Article 62 of the Patent Cooperation Treaty, any state that is a member of the International Union for the Protection of Industrial Property can become a party by fulfilling the following conditions: 

  • The party is required to ratify the treaty. 
  • It is necessary to deposit an instrument of its ratification and accession with the Director General. 
  • It further provides that the provisions of Article 24 of the Stockholm Act of the Paris Convention will be applicable to the treaty and its signatories. 

Benefits of the PCT

The PCT provides a number of benefits to patent applicants, including the following:

  • Simplified application process: The PCT provides a single, streamlined application process for filing patent applications in multiple countries. This simplifies the process and reduces the amount of time and money required to file patent applications in multiple countries. This will further encourage young minds to put in their hard work in creations and useful inventions.
  • Cost savings: Earlier, every country had its own rules and laws for filing patent applications. Even though the fees vary from one country to another, the PCT allows applicants to save money on filing fees by filing a single PCT application instead of multiple national patent applications. Additionally, the PCT provides a unified system for international patent search and examination, which reduces the cost of patent protection in multiple countries. Also, it reduces translation costs too. For example: to get patent protection in Japan, it was necessary to make a patent application in Japanese, and now by virtue of PCT, no such translations are required at the initial stage. At the national stage, translations may be required in some countries and most countries have lower national fees for international applicants in recognition of the work done earlier at the international stage. The stages and procedure of PCT filing have been explained in detail later in this article.
  • Increased protection: The PCT provides applicants with the opportunity to extend the scope of their patent protection in multiple countries in a few simple steps. This increases the chances of successful patent protection and allows applicants to protect their inventions in more countries. This will further reduce confusion in searching for the prior art and save time. 
  • Increased visibility: The PCT provides applicants with the opportunity to increase the visibility of their inventions in multiple countries. This can help to attract investment, partners, and customers in different countries and ultimately boosts the economy and foreign relations among the countries. 

Disadvantages of the Patent Cooperation Treaty (PCT)

The following are the disadvantages of the treaty:

  • Limited coverage – The treaty provides a procedure for only patents. A person cannot patent a design by filing an application under the treaty as design patents are recognized in the USA but in various other PCT member states like India, separate sui generis laws are there for design protection and patents are not granted for designs in such member states. 
  • Costly process – The patent procedure under the treaty can be costly if the applicant is targeting patent protection in less than five PCT member countries and thus cannot be afforded by many such people.

Procedure for filing the application under PCT

The PCT is designed to make the process of obtaining patent protection in multiple countries simpler and more efficient. The procedure to file an application consists of two phases. The first is the international phase, in which the application is filed with the parent office of a contracting state. This is followed by the second phase, i.e., national or regional phase, in which necessary documents are filed in the patent offices of different contracting states in which the protection is sought. The process of filing an application under the treaty is as follows:

Filing of application

The first and foremost step is to file an international application with the competent patent office. This office is known as the receiving office. It can also be filed with the International Bureau as given under Rule 19 of the PCT. According to Article 3 of the treaty, the application must contain regulations, requests, descriptions, claims, drawings, and an abstract. It also states that certain conditions must be fulfilled while filing the application. These are:

  • The application must be in a single prescribed language. 
  • It must comply with all the requirements and contain the necessary information and details regarding the invention.
  • It must comply with the requirement of unity of invention.
  • It must be followed by payment of the required fees. 

According to Article 9 of the treaty, any resident or national of a contracting state or of a state that is a member of the treaty can file an international application for a grant of a patent. It is the duty of the receiving office to check whether there are any defects in the application and If the application contains defects that are listed under Article 14 of the treaty, then the application will be considered withdrawn after giving the applicant an opportunity to correct the error within a particular time limit. The same will be done in case the prescribed fee is not paid by the applicant or he fails to furnish the necessary drawings, which shall then be considered non-existent. The defects listed under the Article under which an application is considered withdrawn are:

  • The application is not signed properly.
  • It does not contain proper details of the applicants. 
  • The title has not been added to the application. 
  • Absence of abstract.
  • It does not comply with other requirements of the application. 

Search and written opinion

According to Article 15 of the PCT, every application will be subject to international search with the objective of discovering the relevant prior art. Article 15(3) provides that the search will be conducted on the basis of claims, giving due regard to the description and drawings in the application. In case the national laws of the contracting state permit, the applicant can request a similar search as given under Article 15(5)(a), and they further can subject any application made under their law to such a search as provided under Article 15(5)(b).

This search would be done by the International Searching Authorities as given under Article 16, which may be a national office or an international organization like the International Patent Institute. Their work would include conducting documentary searches on prior arts. This international search authority is appointed by the assembly upon the conclusion of an agreement that specifies the rights and obligations of parties. After the search, a report will be prepared, which will also include a written opinion regarding the patentability of the invention. 

Publication of application 

The next step involves the publication of the application by the International Bureau in one of the ten languages, like English, French, Spanish, etc. This publication is usually done after 18 months from the date of filing the application. However, the applicant can ask the International Bureau to publish his application at any time before 18 months, as given under Article 21 of the treaty. Article 21(3) provides that the search report by the international searching authority will be published in accordance with the regulations, which also govern the language and form of publication as given under Article 21(4). Further, Article 21(5) provides that no publication will be done if the application is withdrawn or considered to be withdrawn before the technical preparation is completed. If the application contains any drawings or expressions that are contrary to public order or morality, the International Bureau can omit such drawings, expressions, or statements as given under Article 21(6). 

After the publication, the third party can file objections to the application regarding the novelty and inventive step of the invention for another 28 months after the priority date. According to Rule 90bis of the PCT, an application can be withdrawn at any time before the expiration of 30 months from the priority date. This withdrawal will be effective from the date of receipt of notice from the applicant to the International Bureau, receiving office, or International Preliminary Examination Authority, as mentioned under Rule 90bis1(b). However, Rule 90bis1(c) provides that no publication of the application shall be affected if a notice of withdrawal transmitted by the receiving office or International Preliminary Examination Authority reaches the International Bureau before the completion of technical preparations. 

Examination of the application 

According to Article 33 of the PCT, the international preliminary examination is done with the object of forming a non-binding opinion about the invention and whether it meets the criteria of novelty, inventive step, and industrial application. This examination is done by the International Preliminary Examination Authority at the request of the applicant. The demand for the same, according to Article 31 of the treaty, must be made with the prescribed fees within three months from the date of transmittal of the international search report to the applicant or twenty-two months from the priority date, as mentioned in Rule 54 bis of the PCT. This further provides the applicant with an opportunity to make changes in the claims, descriptions, and drawings if required. 

National phase 

After 30 months from the date of filing the application, the international phase ends and the national phase starts, where an application is examined by the national authorities of different states. The time limit to start a national phase may vary according to the different laws of the states. According to Article 20(3) of the PCT, the application or the documents cited in the international search report may be sent to the office of any state at the request of the applicant or that office. Further, Article 40(2) provides that the international application can be examined by the elected office at any time at the request of the applicant. 

Summary of the procedure for PCT filing

This, the whole procedure of filing the international application for a patent, the examination at the international phase, and the national phase, can be summarized as follows:

  • Step 1: An applicant files a single PCT application with a designated patent office or the competent patent office called the Receiving Office (RO). 
  • Step 2: The designated patent office evaluates the PCT application and performs a preliminary search of the invention. In this search, it clarifies whether the application fulfills the criteria of a patent like novelty, inventive step and capability of industrial application. 
  • Step 3: The designated patent office issues a preliminary report on the invention, which includes an international search report (ISR) and a written opinion (WO), which also gives insight into the invention and errors in the application, if any. 
  • Step 4: The international search report and written opinion are published and made available to the public. Any person can raise objections related to novelty or inventive steps of the invention along with any prior art at this stage. 
  • Step 5: The applicant can choose to extend the application to any of the countries that are members of the PCT. At this stage, the international phase ends and the application moves to the national phase. 
  • Step 6: Each of the designated countries evaluates the application and decides whether or not to grant the patent according to their laws and rules. 

Requirements of the application filed under the PCT

In order to file a successful PCT application, applicants must meet certain requirements. These include:

  • The PCT application must be filed within one year of filing a national patent application in the country where the applicant resides or is the citizen. 
  • The application must be filed within the prescribed language which may be English, French, Spanish, etc. in the competent patent office called the receiving office.  
  • The application must contain the details of inventions, claims and its description. 
  • The applicant is also required to pay the prescribed fees within the given time period.
  • The applicant must provide the list of countries in which he wants to apply for the patent so that the application is extended in that regard. 
  • Applicants must also comply with the other requirements of the designated patent office, which may vary from country to country.

World Intellectual Property Organisation and Patent Cooperation Treaty 

The World Intellectual Property Organization, or WIPO, is one of the agencies of the United Nations that was established with the aim to promote and protect intellectual property across the globe and help the countries grow in this field. The WIPO holds discussions related to intellectual property and forms its rules and policies to lay down a uniform process of registration and protection of such properties. It also works with the governments of different countries, non-governmental organizations, and individuals to work for socio-economic development. It has administered various treaties and conventions related to the protection of intellectual property and their registration with the help of a uniform procedure. 

One such treaty is the Patent Cooperation Treaty (PCT), that provides a uniform procedure for the registration of patents related to inventions in multiple countries with a single application. The PCT is one the treaties regulated by the World Intellectual Property Organization (WIPO). WIPO is an intergovernmental organization that promotes the protection of intellectual property rights around the world. WIPO is responsible for managing the PCT and providing assistance to applicants in filing PCT applications.

What are the fees associated with the PCT

There are a number of fees associated with filing a PCT application. The fees may vary from country to country and are subject to change. These include:

Filing fee: This is the fee charged by the designated patent office for processing the international application filed for seeking patent protection for the invention. 

Search fee: This is the fee charged by the designated patent office for performing a search of the invention and making a report of the same. 

Examination fee: This is the fee charged by the designated patent office for examining the application and its contents, which include the claims and description of the invention. 

Extension fee: This is the fee charged by the designated patent office for extending the application to additional countries when it enters the national phase after completion of the international phase.

Latest fees under the PCT

The latest fees to be paid for the patent application under the Patent Cooperation Treaty are as follows: 

Type of feesRegular Small entity Micro entity
Transmittal fee or filing fee. $260$104$52
Search fee when the United States Patent and Trademark office is the international searching authority $2180$872$436
International filing fee$1219 for the first 30 pages of the application and $16 for each additional page. $1219 for the first 30 pages of the application and $16 for each additional page.$1219 for the first 30 pages of the application and $16 for each additional page.
Handling fees$216$216$216
Preliminary examination fees when the United States in the examining authority. $640$256$128

PCT – National stage processing and entry – USPTO

The national application in the United States is filed under 35 U.S.C. 371. An applicant who files the application for a patent has certain advantages related to:

  • Delay in time when the required documents are submitted to the national office.
  • Advantage of international search and a written opinion regarding the fulfillment of criteria of granting patent i.e., novelty inventive step and the industrial application.
  • Delay in expenditure and payment of fees.
  • Extra time for research.
  • Time to evaluate financial, marketing, commercial and other necessary considerations and costs.
  • Option to obtain an international preliminary examination. 

The national phase of an international application is different from an application filed domestically because of its late submission, which is 30 months from the priority date as compared to 12 months in a domestic application. Apart from this, the status of prior art is already known in the international application, which is not available in the domestic application. 

When the international application enters the national phase in the United States, it is accorded an application number, which is used to track the progress of the application and make the process expeditious. The national stage commences with the expiration of the time limit prescribed under Article 22 or Article 39 of the treaty. Thereafter, the applicant is required to file the national fees, a copy of the international application unless already given by the International Bureau, changes in the claims and descriptions, the oath of the inventor, and translations with the Patent and Trademark Office. 

After an application enters the national phase, no patent will be granted or refused before the expiry of the prescribed time limit given under Article 28 and Article 41 of the treaty unless the applicant gives his or her express consent. At this stage, the applicant can also make any changes to the specifications, claims, and drawings in the application.  

PCT-Patent Prosecution Highway Program

In order to accelerate the work of patent applications in the national phase and avoid delay and confusion related to any query or criteria for granting a patent, bilateral agreements have been signed between patent offices to promote the sharing of work and use the work done by patent offices in other countries. These are known as the “Patent Prosecution Highway Program.” The work that is done by one patent office and used by another includes the following:

  • Written opinion of the international search authority of that country. 
  • Opinion of international preliminary examining authority. 
  • The examination report was issued in this regard. 

These programs allow the applicant to request a fast-track examination of claims in an application that is pending in a patent office after at least one claim has been allowed by the first patent office. These help the applicant reach the stage of disposition of application quickly and efficiently. The United States Patent and Trademark Office (USPTO) has such bilateral agreements with countries like Brazil, France, Mexico, Malaysia, Morocco, Romania, Saudi Arabia, etc. In 2014, the USPTO launched pilot programs under the Global Patent Prosecution Highway Program (PPH) or IP5 PPH that could simplify access to the participating patent prosecution highway offices. For this, it has formulated pilots under such global and IP5 programs. 

The European Patent Office also has such programs that could accelerate the processing of a patent application if its claims have been declared patentable by any other office. One of the most beneficial aspects of these programs is that they are free, and no fees are to be paid for them. They also provide efficiency in the work as they can be used by any other patent office. This makes the whole procedure expeditious. The European Patent Office has such agreements and programs with Australia, Brazil, China, Canada, United States etc.  

Important case laws

Abbott Laboratories v. Alra Laboratories, Inc. (1997) 

Facts of the case

In order to prevent the patent of the plaintiff, the defendant in this case contended that the plaintiff failed to disclose “best mode” in their application as required under the laws of the United States. The mode discussed in the application was different from the one required under the law. 

Issues involved in the case

Whether there has been a violation of US laws in the application and whether the patent will be granted or not?

Judgment of the Court 

The District Court of the Northern District of Illinois in this case held that the laws in the US with respect to the best mode doctrine are stringent. Since the applicant under the application filed through PCT made a statement disclosing that the mode is another mode, the non-inclusion of the preferred mode in the application was not a violation of the best mode doctrine. 

Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc. (2000)

Facts of the case

In this case, the defendant tried to invalidate several patents of the plaintiff by making a reference to the application filed under the Patent Cooperation Treaty and arguing that there exists prior art against such an application and arguing not to grant a patent and take away earlier protection.

Issues involved in the case

Whether the patents held by the plaintiff be invalidated?

Judgment of the Court 

The District Court of the Northern District of California held that the application filed under the treaty can only be effective as prior art on the date of its publication and not later. Thus, the defendant was unsuccessful in his attempt to invalidate the patents held by the plaintiff. 

Actelion Pharmaceuticals Ltd. v. Matal (2018)

Facts of the case

In this case, the plaintiff filed an application under the Patent Cooperation Treaty and subsequently entered the national phase four days before the expiration of the time limit of thirty days. He also filed a preliminary amendment but failed to submit the request to start the process of national examination. The last day of the month was a holiday, and the process began the next day. As a result of this, a patent was issued with a patent term adjustment. In lieu of this, the plaintiff filed an application for recalculation of the adjustment, alleging that it must be done on the basis of the date of entry in the national phase. 

Issues involved in the case

Whether the applicant’s request be granted?

Judgment of the Court

The Court of Appeals for the Federal Circuit observed that the plaintiff failed to make an express request for the initiation of the examination procedure in the national phase. It was further held that this national phase started on the next day of the expiration of a term of 30 days, which apparently was a public holiday, and so the request of the plaintiff was not granted and the decision of the District Court was affirmed. 

Conclusion

The Patent Cooperation Treaty is an important international agreement designed to simplify the process of obtaining patent protection in multiple countries. It provides applicants the opportunity to file a single PCT application and extend it to any country or countries of their choice.  This makes the whole process of obtaining patent protection more efficient and cost-effective.

The PCT is administered by the World Intellectual Property Organization. There are a number of fees associated with filing a PCT application, and applicants must meet certain requirements in order to be successful. However, the numerous fees that are to be paid in the whole process of granting a patent increase the overall cost and make the procedure costly for people to afford. Another disadvantage is that some countries are not signatories to the treaty, which means that in order to get the patent in those countries, a separate application has to be filed by the applicant. 

Frequently asked questions (FAQs)

What happens if the contracting states of the treaty are at dispute regarding its application and interpretation?

If the contracting states are in dispute regarding the interpretation and implementation of the treaty and are not able to solve it through negotiations, then according to Article 59 of the treaty, they can bring the matter to the International Court of Justice after confirming with each other. 

What is the constitution of the assembly under the treaty?

According to Article 53 of the treaty, the assembly will consist of contracting states. A delegate from each country would represent it in the assembly. They will be accompanied by alternate delegates, advisors, and experts to assist them. 

How many chapters and articles does the treaty contain?

The treaty consists of 8 chapters and 69 articles. The chapters deal with the following matters:

  • Chapter I deals with international application and search.
  • Chapter II gives provisions regarding international preliminary examination.
  • Chapter III deals with the common provisions under the treaty. 
  • Chapter IV provides provisions related to technical services. 
  • Chapter V gives the administrative provisions.
  • Chapter VI deals with disputes between contracting states. 
  • Chapter VII provides provisions for the revision and amendment of the treaty. 
  • Chapter VIII is the final chapter and deals with provisions regarding reservations, procedure to become party to the treaty, renunciation etc. 

References

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