Patent Cooperation Treaty (PCT)

Patent Cooperation Treaty (PCT) #patent #patents #pct
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This video is about the Patent Cooperation Treaty (PCT)
With the Patent Cooperation Treaty you can file one single patent application that is valid in 150 countries as of this recording. The latest additions are Djibouti and Kuwait in June 2016. The most notable omission from the list are Taiwan and Argentina. The PCT-application will not result in a granted patent, but rather the applicant will have to enter so called national or regional phases typically 30 months after the priority or filing date, whichever is earlier. Some of you may know, that you have a 12 months priority deadline to file a patent application in other countries than your first filed patent application. So some people basically see the PCT-application as a paid extension of the priority deadline of 12 months to 30 months. So the four most important advantages are:
1) You can postpone the final decision where you want patent protection by at least 18 months.
2) You can maximally delay the national/regional granting procedures (and their costs).
3) You can maximally delay the translation into the different languages.
4) It is very easy to have a validly filed application in many countries with all formalities fulfilled.
Let’s look at the details:
The conference leading to the PCT was held in 1970 in Washington and the treaty was signed at the end of this conference. The treaty then entered into force in 1978 with 18 original member countries.
You can file a PCT application with your Receiving Office (OR). The receiving office is the patent office of the country, where at least one applicant is national or resident, or as a default the International Bureau in Geneva at WIPO. At least one applicant needs to be national or resident of a member state of the PCT. So, a German client could file the PCT application with the German Patent and Trademark Office, the EPO or the WIPO.
Then a search is conducted by the International Searching Authhority (ISA). The ISA depends on the Receiving Office (RO) and sometimes can be chosen by the applicant. Typically you get the search together with the preliminary opinion regarding the patentability within 9 months, if this is a first filing, and within 16 months, if this is a priority filing.
As with most other patent applications, the PCT application is typically published after 18 months in one if the official 10 official languages.
After receiving your search, you can also request a so called preliminary examination. However, in my personal view, the preliminary examination only has limited value for the following reasons:
- The examiners for some reason have little incentive to within their office to spend a lot of effort. For that reason, the result from their preliminary examination typically a copy of the written opinion during search with two or three sentences added taking into account the comments of the applicant.
- The results from the preliminary examination are not binding in most member states. The examiners during the national/regional phase will typically ignore the result of the preliminary examination.
Then, typically at the latest after 30 months, you need to enter the national/regional phase. That means that you have to select the offices, where you want to enter into a regular granting procedure for the respective patents. Some offices fixes the time limit differently. So, as an example, you can enter the regional phase before the European Patent Office 31 months after filing or the priority date.

You can also find the extremely detailed official PCT Applicants Guide here:
http://www.wipo.int/pct/en/appguide/


Legalese and Disclaimer

You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. This video should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.