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Intellectual Property Newsletter

Foreign Applications and the Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) of 1970 was created to simplify the patent application process for international patent protection. Prior to the PCT, the primary means for obtaining international patent protection was the Paris Convention for the Protection of Industrial Property. Under the Paris Convention, still in effect, applicants are required to submit separate filings to secure patent protection in each country where protection is sought. However, under the PCT, with over 120 signatory countries, applicants may secure patent protection for all signatory countries simultaneously with fewer procedural steps. On a practical level, where patent protection is only sought in only one or two countries, choosing to utilize the Paris Convention would likely be more cost effective and expeditious.

Initial Filing of the PCT Application

The inventor files an initial PCT patent application designating the contracting countries in which they intend to seek patent protection. This application is generally filed in the national patent office of the country where the inventor resides. The PCT application is then subject to an international search by a national patent office, resulting in an “international search report.” This report contains a listing of all of the items which could possibly affect the patentability of the invention in any of the countries designated in the application, e.g., prior art.

Upon receipt of this report, the inventor has the option to withdraw the application if it seems unlikely that a patent will be granted. If the application is not withdrawn, the international application and search report are then published by the International Bureau and sent to each office designated in the PCT application.

After filing the PCT, an applicant may at any time opt to enter the national stage, a phase in the patent process where the application is sent to each designated country for national filing. Some member countries, however, have time restrictions in place, requiring national or regional applications to be filed within 20 months of the initial PCT application. Such countries may extend this deadline where the applicant has requested an “international preliminary examination report.”

Advantages of Filing under the PCT

Applicants gain additional time for filing through their participation in the PCT rather than filing separate applications in each country where they wish to gain patent protection. The applicant, due to the additional available time, may obtain translations of the patent application and pay the filing fees in the foreign countries with greater ease. The burden on each national patent office is reduced greatly through the generation of the international search report on the patentability of the invention. The extensive international search performed by a national patent office allows the applicant to make an informed decision on whether to continue to pursue the PCT application, thereby saving both time and money.

Amendments and Updates

Each year, the number of international patents filed increases substantially. One reason the PCT continues to enjoy such popularity is the fact that it is frequently updated for increased efficiency. Since its introduction, it has been amended or modified three times, including revisions in its procedures to increase efficiency and ease of use. Such reform has been encouraged due to the designation of two committees created to receive suggestions for areas of reform: the Working Group on Reform of the PCT and the Committee on Reform of the PCT.

A notable revision took effect in January 2004 when a reform process, initiated in 2001, culminated with numerous changes to increase fairness and accessibility of the international patent process. The World Intellectual Property Organization noted that the changes included increased search capabilities, increased accessibility of international preliminary examination reports and reduced duplication in the application process.

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