Patent Cooperation Treaty

Historical Background

From an unstructured beginning around the Fifteenth Century in Italy, the patent system has attained some formal status through specific statutes in various countries around the world. With the onset of Industrial Revolution, the modern patent system was catalyzed for commercial exploitation of inventions. From time-to-time, the patent system has undergone changes to keep pace with rapid advances in science and technology as well as with the evolving international trade practices.

The traditional patent system requires the filing of individual patent applications in each country where the patent protection is sought, with the exception of various regional patent systems such as African Intellectual Property Organization (OAPI) System, the Harare Protocol System of the African Regional Industrial Property Organization (ARIPO), the Eurasian Patent System, and the European Patent System. Most importantly, the applicant has to incur expenses for translation, patent attorneys / agents in various countries and payment of fees to the Patent Offices, all at a time at which he/she often does not know whether he/she is likely to obtain a patent or his/her invention is really new compared with the state-of-the-art. Moreover, every single Patent Office with which an application is filed has to carry out a formal examination of every application filed with it. Each Patent Office has to make a search to determine the state-of-the-art in the technical field of the invention and has to carry out an examination as to its patentability.

In order to reduce the duplication of the effort both for the applicants and the National Patent Offices, an idea was mooted in 1967 to bring about international cooperation in patenting. As a result, a draft of an international treaty was prepared by the United International Bureau for the Protection of Intellectual Property (BIRPI), the predecessor of World Intellectual Property Organization (WIPO), which underwent revision later. Subsequently, a Diplomatic Conference held in Washington in June 1970 adopted a treaty called the `Patent Cooperation Treaty’ (PCT). The treaty came into force on 24th January 1978, and became operational on 1st June 1978 with an initial 18 contracting countries. As on 1st September 2003, as many as 122 countries are party to the PCT (List is enclosed in the appendix). India joined the PCT with effect from 7th December 1998. Currently administered by WIPO, the PCT is open to countries party to the Paris Convention for the Protection of Industrial Property. Instruments of ratification and accession must be deposited with the Director General of WIPO. Thus, the emergence of PCT is one of the major attempts to simplify the patent system at the international level.

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an agreement for international cooperation towards harmonization of patenting at the international level. Major objective of the PCT is to make the process of patenting more efficient, effective and economical in the interests of applicants seeking patents in several countries. The treaty makes it possible to seek patent protection for an invention simultaneously in each of the large number of countries by filing an `International Patent Application’. Such an application can be filed by anyone who is a national or resident of a contracting country party to the PCT. The treaty enables the filing, with a single Patent Office, of a single application in one language having effect in each of the contracting countries, which the applicant `designates‘ in his/her application. The PCT becomes relevant only when the applicant is interested in filing patent application in several countries. If he/she is keen on filing a patent in one country only, the PCT has no relevance.

The PCT also provides a framework for dissemination of technical information within the member countries. It promotes the exchange of technical information contained in a patent document among the countries signatory to the treaty and also with the scientific community concerned with that invention. The treaty only simplifies the procedure for an applicant to obtain patents for his/her invention in a number of countries designated for the purpose. Although the PCT application is called an `international application’ the treaty does not provide for the `international patent’ which is left to the specific country in which the patent is sought by the applicant. The PCT is not a platform for grant of patents. Patents continue to be granted by various National Patent Offices (referred to as `Designated Offices’) in which patent protection is sought by designating the application in that country.

Organization and Administration

The PCT is an ongoing international attempt of WIPO to rationalize and facilitate a cost-effective system for filing patents internationally, conducting prior art searches and for the examination of patent applications. The PCT has created a Union, which has an Assembly. For effective discharge of its responsibilities, the PCT is assisted by a number of organs, as under :

a) International Patent Cooperation Union
It is constituted by the countries party to the treaty for bringing about cooperation in the filing, searching and examination of applications for the protection of inventions, as well as for rendering special technical services.

b) Assembly
Every country party to the PCT is a member of the Assembly. Important tasks that are assigned to the Assembly include i) amendment of the regulation issued under the treaty (numbering 69 Articles), ii) adoption of the biennial programme and budget of the Union, and iii) fixing of certain fees connected with the use of the PCT system.

c) International Bureau
It performs the administrative tasks concerning the Union. It publishes the PCT Gazette and bring out other publications.

d) Periodic Meeting
The overall functioning of the PCT is streamlined through periodic meetings of the following:
i) PCT Assembly (ordinary and extraordinary sessions);
ii) PCT Committee for Administrative and Legal Matters;
iii) PCT Committee for Technical Cooperation;
iv) PCT Informal Consultation Meeting on Electronic Filing;
v) Meeting of International Authorities under the PCT;
vi) Committee on Reform of the PCT; and
vii) Working Group on Reform of the PCT.

e) Information Service
In order to facilitate the member countries, WIPO brings out the following publications on the PCT and its functioning:
i) PCT Applicant’s Guide in English and French in two volumes;
Y Volume I : Introduction to the International Phase
Y Volume II : Introduction to the National Phase
ii) PCT Newsletter in English (monthly); and
iii) PCT Information Service
Phone : (41-22) 338 83 38; Fax : (41-22) 338 83 39
Email : pct.infoline@wipo.int
Besides its internal functional units, the PCT is facilitated in its functioning by the following authorities.

a) International Search Authorities (ISA)
The international search for technical information pertaining to the invention is undertaken by:
i) Australian Patent Office;
ii) The Austrian Patent Office;
iii) The Chinese Patent Office;
iv) The European Patent Office;
v) The Japanese Patent Office;
vi) The Korean Industrial Property Office;
vii) The Russian Agency for Patents and Trademarks;
viii) The Spanish Patent and Trademark Office;
ix) The Swedish Patent Office; and
x) The US Patent and Trademark Office.

b) International Preliminary Examination Authorities (IPEAP
All the authorities included for international search (as mentioned above), except the Spanish Patent and Trademark Office.