What is the Patent Cooperation Treaty (PCT)? Patent Cooperation Treaty (PCT) Review

The treaty was signed by 35 countries in Washington on June 19, 1970. It came into effect on June 1, 1978. There are 153 signatories to the Patent Cooperation Treaty, including most industrialized countries. Patent applications filed under the Patent Cooperation Treaty are called international applications or PCT applications. They are governed by the World Intellectual Property Organization, headquartered in Geneva.

The Patent Cooperation Treaty has made internationally unified provisions for the acceptance and examination standards of patent applications. Within the scope of the member states, as long as the applicant submits an international application in one country using a prescribed language and specifies the countries in which patent protection is to be obtained in the application, it will have the effect of submitting a national patent application to each country separately. The application procedure stipulated in the treaty simplifies the procedures for applicants to apply for patents in multiple countries for the same invention, and also reduces the duplication of work of patent offices in various countries.

The international application procedure is divided into the "international phase" and the "national phase". In the "international phase", the receiving office accepts international applications, and the international prosecution unit searches for existing technologies and submits an international search report. If the applicant requests a preliminary examination, the international preliminary examination unit examines whether the invention has novelty, creativity, and practicality, and submits an international preliminary examination report. If the applicant does not request an international preliminary examination within the prescribed time limit, the international application will enter the "national phase" within 20 months from the priority date. If an international preliminary examination is requested, it will enter the "national phase" within 30 months from the priority date. In the "national phase", the patent offices of various countries examine and approve patents in accordance with the conditions and procedures prescribed by their own laws.

my country officially became a member of the Patent Cooperation Treaty on January 1, 1994. According to the treaty, when a country joins the treaty, its patent office automatically becomes a receiving office. The treaty also stipulates the conditions for becoming an international search unit and an international preliminary examination unit. A country's patent office must meet the conditions and be designated by the treaty union assembly to serve as an international search and international preliminary examination unit. At present, the Chinese Patent Office has become the receiving office of the PCT and the international examination unit for international searches. Chinese has become the working language of the PCT. my country's accession to the PCT has accelerated the integration of my country's intellectual property system with the international community, marking an important step for my country's intellectual property system to move toward international standards. It will have a positive impact on the continuous improvement and development of my country's patent system, the deepening of reform, the expansion of opening up, and the development of scientific and technological, economic and trade exchanges with other countries.

Treaty Overview

The PCT was concluded in 1970, amended in 1979, and revised in 1984 and 2001. The PCT is open to States party to the Paris Convention for the Protection of Industrial Property. Instruments of ratification or accession must be deposited with the Director General of WIPO. Through the treaty, applicants can simultaneously seek patent protection for inventions in each of a large number of countries by filing a single "international" patent application. Such applications may be filed by anyone who is a national or resident of a contracting state. Applications are generally filed with the national patent office of the contracting state of which the applicant is a national or resident, but applicants may also choose to file with the International Bureau of WIPO in Geneva. International applications may also be filed with the European Patent Office, the African Regional Industrial Property Organization, the African Intellectual Property Organization or the Eurasian Patent Office if the applicant is a national or resident of a contracting state to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs, the revised Bangui Agreement relating to creation of the African Intellectual Property Organization or the Eurasian Patent Convention, respectively.

The international application is then subject to a so-called "international search". This search is conducted by one of the main patent offices designated by the PCT Assembly as an International Searching Authority (ISA). This search results in an "International Search Report", which contains extracts from published documents that may have an impact on the patentability of the invention claimed in the international application. At the same time, the International Searching Authority prepares a written opinion on patentability.

The International Searching Authority will notify the applicant of the international search report and written opinion, and the applicant may decide to withdraw the application, especially if it is highly likely that a patent will not be granted based on the report or the opinion.

If the international application has not been withdrawn, it will be published by the International Bureau together with the international search report.

benefit

The PCT procedure provides significant benefits to applicants, patent offices and the general public:

(i) The applicant has 18 months longer than he does in non-PCT procedures to consider whether he wishes to seek protection in foreign countries, appoint a local patent agent in each foreign country, prepare necessary translation materials and pay national fees; he can be sure that as long as his international application is filed in the form prescribed by the PCT, no designated office will reject the application on formal grounds during the national phase of processing the application; he can also assess with greater confidence the chances of his invention being granted a patent based on the international search report or written opinion; the applicant can also make amendments to the international application during the international preliminary examination to make the application meet the requirements before it is processed by the designated office;

(ii) With the international search report, written opinion and, where applicable, international preliminary examination report attached to the international application, the labor intensity of search and examination work in each patent office can be greatly reduced or even eliminated;

(iii) Since every international application is published together with an international search report, third parties are also in a better position to form a well-founded opinion on the patentability of the claimed invention.

Application Procedure

International patent applicants only need to file an application once in a contracting state in a prescribed language. If the application specifies the countries where patent protection is required, it will have the effect of filing patent applications in these countries separately. When applying for PCT, it first goes through the mandatory national/regional examination stage and then is directly checked by the international agency. The application is accepted by the Receiving Office (RO), and then the International Searching Authority (ISA) searches for existing patents and issues an international search report, with a written opinion on the patentability of the application. As an optional procedure, international patent applicants can also request the International Preliminary Examining Authority (IPEA) to issue a preliminary examination report. Finally, the grant of patent rights is decided by the patent office of the country/region (i.e. the country/region where patent protection is required in the international patent application) in accordance with the substantive and procedural requirements of domestic law.

Legal status of patents obtained through the PCT

The Patent Cooperation Treaty does not create an "international patent" that is used in all countries. The granting of patent rights still needs to be resolved through domestic laws, and the granted patent rights are also territorial. The Patent Cooperation Treaty provides a platform for the patent application process in multiple countries to reduce the tedious labor of repeated applications and improve application efficiency.

Treaty Directory

Preface

Xu Ze

Article 1 Formation of the Alliance

Article 2 Definitions

Chapter I International Application and International Search

Article 3 International Application

Article 4 Request

Article 5 Instructions

Article 6 Claims

Article 7 Attachments

Article 8 Claiming priority

Article 9 Applicants

Article 10 Receiving Office

Article 11 Filing Date and Effects of the International Application

Article 12 Transmittal of the International Application to the International Bureau and the International Searching Authority

Article 13 Copies of the International Application to Designated Offices

Article 14 Certain Defects in the International Application

Article 15 International Search

Article 16 International Searching Authority

Article 17 Procedure before the International Searching Authority

Article 18 International Search Report

Article 19 Amendment of Claims before the International Bureau

Article 20 Communication to Designated Offices

Article 21 International Publication

Article 22 Copies, Translations and Fees to Designated Offices

Article 23 Postponement of national proceedings

Article 24 may lose its effect in designated countries

Article 25 Review by Designated Offices

Article 26 Opportunity to Correct Before the Designated Office

Article 27 National requirements

Article 28 Amendment of Claims, Description and Drawings before a Designated Office

Article 29 Effect of international publication

Article 30 Confidentiality of the International Application

Chapter II International Preliminary Examination

Article 31 Requirement for International Preliminary Examination

Article 32 International Preliminary Examining Authority

Article 33 International Preliminary Examination

Article 34 Procedure before the International Preliminary Examining Authority

Article 35 International Preliminary Examination Report

Article 36 Transmittal, Translation and Communication of International Preliminary Examination Report

Article 37 Withdrawal of Demand or Election for International Preliminary Examination

Article 38 Confidentiality of the International Preliminary Examination

Article 39 Copies, Translations and Payment of Fees to Elected Offices

Article 40 Postponement of national examination and other proceedings

Rule 41 Amendment of Claims, Description and Drawings before Elected Offices

Article 42 Results of National Examination by Elected Offices

Chapter III Common Provisions

Article 43 seeks certain kinds of protection

Article 44 seeks two kinds of protection

Article 45 Regional Patent Treaties

Article 46 Incorrect Translation of the International Application

Article 47 Time limit

Article 48 Delay in meeting certain deadlines

Article 49 Right to Perform Practice before an International Authority

Chapter 4 Technical Services

Article 50 Patent Information Service

Article 51 Technical Assistance

Article 52 Relationship with other provisions of this Treaty

Chapter V Administrative Provisions

Article 53 Assembly

Article 54 Executive Committee

Article 55 International Bureau

Article 56 Technical Cooperation Committee

Article 57 Finance

Article 58 Implementing regulations

Chapter VI Disputes

Article 59 Disputes

Chapter VII Revision and Amendment

Article 60 Revision of this Treaty

Article 61 Modification of Certain Provisions of this Treaty

Chapter 8 Final Clauses

Article 62 Accession to this Treaty

Article 63 Entry into Force of this Treaty

Article 64 Reservation

Article 65 Progressive application

Article 66 Withdrawal

Article 67 Signature and language

Article 68 Duty of custody

Article 69 Notification

References

• 1. PCT Laws and Regulations: World Intellectual Property Organization
• 2. About the Patent Cooperation Treaty: World Intellectual Property Organization