‫ِبْس ِم ٱِهّٰلل ٱلَّر ْح ٰم ِن ٱلَّر ِح يِم‬

In the name of ALLAH, The Merciful, The

Compassionate
Presentation of intellectual property
right and innovation
Topic

The patent cooperation treaty (PCT)

 Introduction
 The national patent system
 History of PCT
 The functioning of the PCT system
 Filling an international Application
 International search
The patent cooperation treaty (PCT)

 Introduction:
The National Patent System:
The national patent system requires the filing of individual patent
applications for each country for which patent protection is sought,
with the exception of the regional patent systems such as the African
Intellectual Property Organization (OAPI) system, the Harare Protocol
system established in the framework of the African Regional Industrial
Property Organization (ARIPO), the Eurasian patent system and the
European patent system.
Time:
 Under the traditional Paris Convention route, the priority of an earlier application
can be claimed for applications filed subsequently in foreign countries but such
later applications must be filed within 12 months of the filing date of the earlier
application.
Difference between the national patent system and the regional patent systems:
 The principal difference between the national patent system and the regional
patent systems such as those mentioned above is that a regional patent is granted
by one Patent Office for several States. Otherwise, the procedure is the same, and
the explanations given in the preceding two paragraphs are equally valid.
History:

 In September 1966, the Executive Committee of the International (Paris) Union

for the Protection of Industrial Property invited BIRPI (the predecessor of WIPO)
 In Washington, D.C., in June 1970 adopted a treaty called the Patent Cooperation
Treaty.
 The Patent Cooperation Treaty or “PCT” entered into force on January 24, 1978,
and became operational on June 1, 1978, with an initial 18 Contracting States.
Paris Convention- Overall Procedure

Paris Convention
 Utility Patents One year to foreign file from original filing date
 Design Patents/Industrial Designs- Six months to foreign file from original filing
date

What about non-Paris Convention (and non-PCT) Countries

 Some provide a one year grace period to file (e.g., Taiwan)-

 Most have an absolute novelty requirement, so you need to file before disclosure
Overall Procedure:
Overview of PCT System
The functioning of PCt system:
The Functioning of the PCT System

International Preliminary Examination:

Overview of the international preliminary examination process
under the Patent Cooperation Treaty (PCT).
Purpose: To obtain an opinion on whether the claimed invention
meets criteria such as novelty, inventive step, and industrial
applicability.
 Filing a “demand” with designated states, along with fees for
examination and handling
The Functioning of the PCT System

International Preliminary Examining Authorities:

Appointed by the Assembly of the PCT Union.
 Same offices as International Searching
Authorities, with the exception of the Spanish
Patent and Trademark Office.
The Functioning of the PCT System

Results of International Preliminary Examination:

Provided in a report to the applicant and elected offices.
Helps applicants calculate their chance of obtaining a patent.
Assists elected offices in deciding whether to grant a patent.
 Useful for evaluating the validity of patents in countries without
substantive examination.
The Functioning of the PCT System

Prosecution Before Designated/Elected Offices (National Phase):

Processing may not start before 20 months (or 30 months with
Chapter II) from the priority date, unless an earlier start is
requested.
After receiving the search report and preliminary examination
report, the applicant can decide whether to continue the procedure
or not.
 Paying national fees and providing translations, if required, to
the designated offices is necessary to proceed.
The Functioning of the PCT System

Benefits of PCT System:

Cost-saving advantage: Allows applicants to evaluate the
likelihood of obtaining patents before proceeding.
Avoids expenses related to separate national applications under the
traditional Paris Convention route.
 Access to the PCT Applicant’s Guide, PCT Gazette, and PCT
Newsletter for further information.
Advantages of the PCT System

Advantages for Patent Offices

Helps Patent Offices manage increasing patent applications efficiently.
Applications coming via the PCT have already been verified for
compliance with formal requirements during the international phase.
 Patent Offices can save on publishing costs, depending on the
language of the international application.
Advantages of the PCT System

Advantages for the Applicant:

 Applicants can file a single international application with effect in foreign countries,
providing more time to decide where to seek protection.
 Cost-saving benefit as the applicant only prepares translations for designated countries of
interest.
Advantages of the PCT System

Advantages for the National Economy and Industry:

Patents granted through the PCT route provide a sound basis for
investment and technology transfer.
Facilitates technology transfer and licensing agreements,
stimulating foreign investment.
 Increases levels of local employment and enhances the technical
skills of the local workforce.
Advantages of the PCT System

Technical Information Benefit:

Developing countries gain early and easier access to modern
technological information through international publication of
PCT applications.
Access to the most important languages, often with an English-
language abstract.
 International search reports help evaluate the technology
disclosed in the application.
Advantages of the PCT System

PCT Participation for Developing Countries:

The PCT system offers distinct advantages for developing
countries without payment of contributions.
 Many developing countries already participate in the Patent
Cooperation Treaty.