PATENT

N. S. Raghava
Department of Information Technology,
Delhi Technological University Bawana
Road, Delhi – 110042.
nsraghava@dce.edu
 THE PATENT COOPERATION TREATY,
1970 (As amended/modified in 1979, 1984, 2001 and
as in force from April, 2002)
 Under the national patent system, an
inventor seeking protection for his
invention in several countries has to
file individual applications in each
country. If there is a regional patent
system like the European Patent
System or African Regional Industrial
Property Organization which grant
patent valid for each country of the
system, one application filed in the
regional office can do.
 Contd…
 Under the Paris Convention for the
Protection of Industrial Property, 1883, as
last revised/amended in 1979, if one filed
a patent application in a member
country, one can file application in other
member countries within 12 months of
the filing of the first application and claim
the same date of priority as for the first
application.
 Contd…
 However, one still had to file application
individually in each country conforming to laws,
rules and regulations of the concerned country,
including the preparation of the application in the
prescribed language.
 This entailed costs on translation, patent attorneys
and application fees for each country. The
application would be examined in each country
independently as to form, prior art and substance.
And one would not be sure if the patent would be
granted in a particular country. This was a great
impediment for flow of technology and
international trade and commerce.
 Contd…
 In 1970, International Union for the
Protection of Industrial Property (BIRPI –
French acronym - the predecessor of
WIPO), after a series of meetings,
adopted in June 1970, a treaty called
the Patent Cooperation Treaty (PCT).
The PCT entered into force on January
24., with 18 contracting parties initially.
In 2007, that number has risen to 137.
The PCT is an agreement for
international cooperation in the field of
patents.
 Contd…

 Basic Objectives of PCT: The principal

objective is to improve the previously
established means of filing patent application
in several countries. It is largely a treaty for
rationalization and cooperation with regard
to the filing, searching and examination of
patent applications and the dissemination of
technical information contained therein. To
achieve these objectives, the PCT
 Contd…
 Establishes an international system the filing with
a single patent office (the receiving office) of a
single application (the international application) in
one language. It will have effect in each
contracting country which is named (designated)
by the applicant in the application where he seeks
protection for the invention.
 Provides for the formal examination of the
international application by the receiving office.
 Subjects each international application to an
international search which results in a report
citing the relevant prior art (mainly published
documents).
 Contd…
 Provides for centralized international
publication of international applications with
the related international search reports, as
well as their communication to the
designated offices.
 Provides an option for an international
preliminary examination of the international
application, including an opinion as to
whether the claimed invention meets certain
international criteria of patentability. This
helps the inventor to decide whether to
proceed with the application and
subsequently the national offices in deciding
whether the patent can be granted.
 Contd…
This part of the PCT procedure is called
the international phase. It is followed by
the national phase which is completed by
the national office of a designated
country which has to decide whether to
grant patent on the application in
accordance with the national statutes.
The reference to national here includes
regional too where applicable. It is to be
noted that the PCT grants no patent and
there is no world patent as such which
 Contd…
 Filing an international application:
Any national or resident of a PCT country
can file an international application with
the national patent office a which acts as
the PCT receiving office. It can also be
filed with the International Bureau (the
WIPO Secretariat functioning as the
receiving office). The application has to
conform to prescribed standards and will
be acceptable in all PCT countries. Only a
single set of fees payable in one currency
at the receiving office is incurred.
 Contd…
 The fees consist of three components: (a) the
transmittal fee, to cover the work of the receiving office;
(b) the search fee, to cover the work of the International
Searching Authority (ISA); and (c) the international fee,
to cover the work of the International Bureau (IB).
 The language of application can usually be one of the
following: Chinese, English, French, German, Japanese,
Russian, Spanish, though other languages have also
been accepted: Danish, Dutch, Finnish, Norwegian,
Swedish. The language depends on the requirement of
the receiving office and of the ISA.
 The receiving office after according a filing date and
formal checking sends a copy of the international
application (the recorded copy) to the International
Bureau and another copy to the ISA ( the search copy).
It keeps a third copy (the home copy).
 International Search:
 The international application is subjected to an
international search of patent documents and
other technical literature, properly arranged for
search, in those languages in which most
applications are filed (English, French and
German and in certain cases, Chinese,
Japanese, Russian and Spanish). The search
follows the standards prescribed in the PCT for
documentation, staff qualification and search
methods and is of high quality. The following
offices serve as ISA: the Australian Patent
Office, the Chinese Patent Office, the European
Patent Office, the Japanese Patent Office, the
Russian Patent Office, the Spanish Patent and
Trademark Office, the Swedish Patent Office,
and the U S Patent and Trademark Office.
 Contd…
 Each ISA is required to have at least minimum
documentation: patent documents as from 1920, of
major industrialized countries together with agreed
items of non-patent literature. The search results are
given in an international search report (ISR) and
made available to the applicant within five months of
filing. The applicant may then decide to amend the
claims on the basis of the search, if necessary, or
even to withdraw it before it is published. A copy of
the ISR is also sent by the ISA to the International
Bureau.
 International Publication
 IB publishes a PCT Pamphlet which contains a front
page giving bibliographic data furnished by the
applicant together with data such as the International
Patent Classification (IPC) symbol assigned by the ISA,
abstract, description, claims, drawings and the ISR. The
pamphlet is published in the language of international
application as filed i.e. if that language is Chinese,
English, French, German, Japanese, Russian or Spanish.
If the language is not English, the title of the invention,
the abstract and the ISR are also published in English.
 The publication of the pamphlet is announced in the
PCT Gazette, which lists the published international
applications as entries reproducing data taken from the
front pages of the pamphlets. It also contains a
Classification Index by technical fields.  
 International publication serves two purposes: (a) to
disclose the invention to the public; (b) to set out the
scope of likely protection.
 International Preliminary Examination
 Once the applicant receives the ISR, he can
make a specific request for international
preliminary examination (IPE) by filing a
demand in which the designated states are
elected. This way the applicant gets an opinion
as to whether the claimed invention meets the
criteria of patentability. A fee for IPE is to be
paid along with the demand to the International
Preliminary Examining Authority (IPEA) along
with a handling fee to cover the work of the IB.
IPEAs, like ISAs, are appointed by the Assembly
of the PCT Union (Union of all PCT members).
The ISA offices serve also as the IPEAs with the
exception of the Spanish Office.
 Contd…

 The results of the IPE are given in a report

to the applicant and the offices of the
elected states through the IB. The IB
communicates the international
application to the designated offices
usually upon publication but latest by the
end of the 19th month since the filing of
the application.
 The National Phase
 If after the receipt of the ISR/IPEA, the inventor
decides to continue the procedure he pays the
prescribed national fees to the designated
(elected) office (s) and if required furnish
translations to these offices in their official
languages. It may also be convenient to
appoint a local agent. The designated national
office follows the national procedure for
granting the patent subject to exemptions that
result from the PCT procedure like matters of
form and contents; the ISR and the IPEA make
the task of the national office light and easy.
Advantages of the PCT System

To the National Patent Office :
 As the application has already been verified with regard
to compliance with formal requirements the, the work
load on the personnel is reduced and it can be deployed
on other work.
 Cost of publishing is saved.
 Does not affect the revenue of the designated office.
 ISR/IPEA eliminate cost of search and patentability
examination.
 Advantages to the Applicant:
 One may file the application with his national/regional
office or with the IB receiving office spending much less
money than in non-PCT procedures and saving time. Also
one gains more time to decide foreign countries where
protection would be required.
 One needs to file only one international application with
effect in all elected countries.
 After ISR/IPER one can decide if one would like to drop
some of the designated countries and save all subsequent
costs for those countries.
 Contd…
 Advantages to the National Economy:
 Patents granted on the basis of international applications
provide a sounder basis for investment and technology
transfer as they have undergone more rigorous search and
examination.

 Greater confidence in patents through PCT encourages

greater licensing of technology and greater inflow of foreign
investment which increase local employment, up gradation
of skills, spurt in economic growth and in turn opportunity for
modernization of industry and greater penetration of export
markets.

 Publication of international applications gives invaluable

access to modern technological information. Patent Offices
of PCT countries receive free of charge a copy of all
published international applications, the PCT Gazette, and
any other publication of general interest published by the IB
in connection with the PCT.PCT requires no payment of
contributions from the developing countries.