Patent Cooperation Treaty
From DrugPedia: A Wikipedia for Drug discovery
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States (see Accession section below for current membership information). A patent application filed under the PCT is called an international application or PCT application.
A single filing of an international application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied with a written opinion regarding the patentability of the invention which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. The PCT does not lead to the grant of an "international patent", which does not exist.
The States party to the PCT, i.e. the Contracting States, constitute the International Patent Cooperation Union.
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History
The Washington Diplomatic Conference on the Patent Cooperation Treaty took place from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed in Washington at the very end of the conference, i.e., on June 19, 1970. The Treaty entered into force on January 21, 1978 initially with 18 Contracting States. The first international applications were filed on June 1, 1978. The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.
Accession
Any Contracting State to the Paris Convention for the Protection of Industrial Property can become a member of the PCT.
A majority of the world's countries are signatories to the PCT, including all of the major industrialised countries (with a few exceptions, including Argentina and Taiwan). As of April 3, 2008, there were 139 Contracting States to the PCT. Sao Tome and Principe (ST) became the 139th Contracting State on April 3, 2008. The PCT entered into force for São Tomé and Príncipe on July 3, 2008.
Procedure
The main advantages of the PCT procedure, also referred to as the international procedure, are the possibility to delay as much as possible the national or regional procedures, and the respective fees and translation costs, and the unified filing procedure.
An international patent application has two phases: The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT. The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.
Filing
The first step of the procedure consists in filing an international (patent) application with a suitable patent office, called a Receiving Office (RO). This application is usually called an international application or simply a PCT application since it does not result in an international patent nor in a PCT patent (both of which do not exist). The international application needs to be filed in one language only (though translations may still be required for international search and international publication, depending on the language of filing and the International Searching Authority to be used). At least one applicant (either a physical or legal person) must be a national or resident of a Contracting State to the PCT, otherwise no international filing date is accorded.In most member states, the applicant or at least one of the applicants of the application is required to be a national or resident of the state of the receiving office where the application is filed. Applicants from any contracting state may file an international patent application at the International Bureau in Geneva.
Upon filing the international application, all Contracting States are automatically designated. An international patent application has the same standing[vague] during the international phase as if a national or regional patent application had been filed in every contracting state of the PCT.
Search
A search or international search is then made by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject-matter. This results in an International Search Report (ISR), together with a written opinion regarding patentability.
The ISR is normally provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).
The ISR is published together with the international application (or as soon as possible afterwards). The written opinion is initially confidential, but unless it is superseded by an International Preliminary Examination Report (see optional examination, below) it is made available in the form of an "international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter I") 30 months after the filing date or the priority date if any. If the ISR and/or IPRP are not in English, they are translated into English for publication.
Publication
18 months after the filing date or the priority date if any, the international application is published by the International Bureau (IB) of WIPO, based at Geneva, Switzerland, in one of the eight "languages of publication": Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish. The “languages of publication” will include Portuguese and Korean soon, i.e. for international applications whose international filing date is on or after January 1, 2009. There is an exception to this general rule however: if 18 months after the priority date, the international application only designates the United States, then the application is not automatically published.
Optional examination
Afterwards, an international preliminary examination may optionally be requested ("demanded"). The "international examination" is achieved by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examining Report (IPER). Since 2004, the IPER now bears the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter II").
When an examination is demanded, the contracting states for which the examination is demanded are called Elected Offices (under Chapter II), otherwise they are called Designated Offices (under Chapter I). The election of a contracting state correspondingly means electing it when demanding (requesting) the examination.
Subject matter
The PCT does not make any specific provision concerning the types of invention which may be the subject of an international application. Rules 39 and 67 permit International Searching and Preliminary Examining Authorities not to carry out search and examination on certain types of subject matter, such as scientific and mathematical theories, methods of doing business and computer programs to the extent that the Authority is not equipped to carry out a search or international preliminary examination concerning such programs. However, while a lack of international search may make national processing more difficult, Article 27(5) PCT makes clear that this does not affect the issue of whether the invention is patentable under the laws of the designated States:
"Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. (...)"
National and regional phase
Finally, at 30 months[17] from the filing date of the international application or from the earliest priority date of the application if a priority is claimed, the international phase ends and the international application enters in national and regional phase. However, any national law may fix time limits which expire later than 30 months. For instance, it is possible to enter the European regional phase at 31 months from the earliest priority date. National and regional phases can also be started earlier on the express request of the applicant.[18]
If the entry into national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.[19] Statistics
The millionth international application (or PCT application) was filed at the end of 2004.[20]
