Patent Cooperation Treaty – Summary

by KATZAROV SA, Patent & Trademark Attorneys,
European Patent Attorneys, Geneva, Switzerland

The Patent Cooperation Treaty (PCT) was concluded in Washington in 1970. It has been in force since June 1, 1978, amended in 1979, 1984 and 2001.

For the list of the States having ratified the Treaty, see: “Member Participation in Conventions“.

The PCT provides for the filing of one patent application (“the international application”) with effect in several States, instead of filing several separate national and/or regional patent applications (regional patent applications: the European Patent Convention, namely EPC; the Eurasian Patent Convention; the African Regional Industrial Property Organization, namely the ARIPO Harare Protocol; and the African Intellectual Property Organization, namely OAPI). The PCT does not eliminate the necessity of prosecuting the international application before the national or regional Offices. The effect of the international application in each Contracting State is the same as if a national patent application had been filed with the national Patent Office of that State.

The PCT created a Union. The Union has an Assembly. Every State party to the PCT is a Member of the Assembly. The Assembly of the PCT Union has established special measures to the benefit of applicants, whether a natural person or not, who are nationals of and reside in a State that is classed as a least developed country by the United Nations. That benefit consists of a reduction of 90% on certain fees under the Treaty.

The international phase of a PCT application (if completed) consists of five main steps: (1) the filing of the international application by the applicant, its processing by the “receiving Office”, and the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); (2) the establishment of the international search report and written opinion by one of the “International Searching Authorities”; (3) the publication of the international application together with the international search report by the International Bureau of WIPO; and optionally (4) the establishment of the supplementary international search report; and also optionally (5) the establishment of an international preliminary examination report PCT Chapter II (the Contracting State or States in which the applicant intends to use the results of the international preliminary examination are called “elected States”).

Upon completion of the international phase, further action is required before the national (or regional) Patent Offices where the applicant wishes to obtain protection for the invention on the basis of the international application. In particular, the applicant will have to pay the required national (or regional) fees and provide translations that are required. The Offices will examine the application and grant or refuse the national (or regional) patent. These procedures before the national (or regional) Offices constitute what is usually referred to as “the national (or regional) phase”.

Applicant: any resident or national of a Contracting State. Different applicants may be indicated for the different designated States.

Where to file: at the competent receiving Office, which is normally the Patent Office of the Contracting State of which the applicant is a national or resident (if several applicants, at least one of them must qualify) or at the International Bureau (WIPO). Filing at WIPO does not change the way in which the International Searching Authority, the International Preliminary Examining Authority, or the persons authorized to practice are determined based on the residence or nationality of the applicant(s).

Naming of inventor(s): is generally compulsory. The naming of the inventor(s) in the request is compulsory in the U.S.A.

Designation of an agent: is preferable and should be made at the time of filing the international application. Any person having the right to be appointed before a national Office may be appointed.

Priorities: multiple and partial priorities can be claimed if they originate from one or more Contracting State party to the Paris Convention or the World Trade Organization (WTO). All claimed priorities must be indicated in the request.

Kinds of patent(s): unless otherwise indicated, the designation of a State expresses the wish to obtain a patent. The applicant may indicate his desire to obtain in any designated or elected State(s) whose law provides for the grant of an inventor’s certificate, a utility certificate, a utility model, a patent of addition, a petty patent, a certificate of addition, a continuation or a continuation in part. In the latter case, the patent’s title or application must be indicated.

Designated States: the designation system is automatic and all-inclusive for all Contracting State(s) in which protection for the invention is desired on the basis of the international application (“designated States”).

Unity of invention: any PCT application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept; if the International Searching Authority finds that the application does not comply with the requirement of unity of invention, it will invite the applicant to pay additional fees, in order to establish more than one international search report.

Rectification of obvious errors: errors of transcription may generally be rectified.

Confidential nature of the international application: the application is kept secret until its publication.

Publication: takes place promptly after the expiration of 18 months from the filing date or, if available, the priority date.

Microbiological inventions: if a microorganism is involved, a sample of it should be deposited at an institution having acquired the status of an international depositary institution under the Budapest Treaty. In the specification, the reference to a deposited microorganism shall indicate: (1) the name and address of the depositary institution with which the deposit was made; (2) the date of deposit of the microorganism with that institution; (3) the accession number given to the deposit by that institution; and (4) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7(c) at least 2 months before the filing of the international application. Time of furnishing the references: within 16 months after the filing date or, if available, the priority date.

Access to the file of an international application (Rule 94): access to the file of the International Bureau includes: (a) written opinion of the International Searching Authority (ISA) (in their original language) and informal comments submitted by the applicant in response to such opinions (in their original language) to be publicly available from the date of international publication; (b) International Preliminary Report on Patentability (IPRP Chapter I) and/or any translation thereof publicly available after the expiration of 30 months from the priority date; (c) International Preliminary Report on Patentability (IPRP Chapter II), if so authorized by an elected Office, publicly available after the expiration of 30 months from the priority date.

National requirements: details of national requirements regarding the reference to deposits of microorganisms are published in the PCT Applicant’s Guide and from time to time in the PCT Gazette, both edited by WIPO, Geneva.

Requirements for filing an international application:
1. Request, signed by the applicant(s), or by an agent;
2. Power of attorney, if an agent is appointed (requirement may be waived by the respective Offices and Authorities as of January 1, 2004);
3. Description with claim(s), the number of copies depends on the receiving Office (see PCT Applicant’s Guide, Vol. I, Point 193, edited by WIPO);
4. Drawing(s), if any. Same number of copies as under 3;
5. Abstract (preferably 50 to 150 words). Same number of copies as under 3;
6. Priority document, if any.

Minimum requirements: request; description with claim(s); drawing(s) (if any). Formal corrections not affecting the filing date may be filed within a period of 2 months. The priority document may be filed not later than 16 months from the priority date.

Electronic filing: available through PCT-SAFE and e-PCT.

Optionally: “PCT Direct” that allows the applicant selecting ISA/EP or ISA/IL to file a letter (“PCT Direct letter”) with informal comments aimed at overcoming objections raised in search opinion of priority application. Requirements: (a) PCT Direct letter filed together with the international application, and (b) the priority application must have been searched by the respective ISA. For ISA/IL, PCT application must be filed at RO/IL (no restriction since July 1, 2015 on RO if ISA/EP is used).

Competent authority for the search: depending on the receiving Office.

Objective of the search: to discover relevant prior art.

Time table: the search report should, as a general rule, be established within 3 months from the receipt of the search copy by the Searching Authority, or 9 months from the filing date or, if available, the priority date, whichever time limit expires later.

Contents of the search report: the citations of the documents considered to be relevant, the classification of the subject matter of the invention and an indication of the fields searched together with references on the searched databases. The report does not contain any expression of opinion.

Copies of documents cited: may be obtained from the Searching Authority.

Amending the claims: after having received the search report, the applicant, according to Article 19, is entitled to amend the claims once within 2 months after the date of receiving that report or 16 months after the filing date or, if available, the priority date, whichever time limit expires later. The amendment must be filed with the International Bureau of WIPO in the form of replacement sheets accompanied by a letter drawing attention to the differences between the replaced sheets and the replacement sheets (max. 500 words). No amendment may go beyond the disclosures in the application as filed.

Publication: the International Bureau of WIPO with the International application normally publishes the search report. The report is published in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish if the application is in one of these languages. If the language is Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian or Spanish, the International Bureau prepares, free of charge, an English translation of the title, the abstract and the search report. If the application is filed in another language authorized by an International Searching Authority, it is published in English only. The translation is then prepared by the International Searching Authority against payment of a fee by the applicant. In addition, the International Searching Authority also prepares a detailed written opinion for every application. The written opinion by the ISA formulates a preliminary and non-binding opinion whether the claimed invention appears to be novel, involves an inventive step (to be non-obvious), is industrially applicable, and whether the international application complies with the requirements of the PCT in so far as checked by the ISA. The written opinion by the ISA is sent to the applicant with the International Search Report (ISR). The ISR is published with the application; the written opinion by the ISA is not published per se.

Effective date: January 1, 2009.

Available for: any international application, irrespective of the filing date, for which the time limit of 19 months to request the supplementary international search expires on or after January 1, 2009.

Competent authorities for the supplementary search: Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation), Nordic Patent Institute, Swedish Patent and Registration Office, National Board of Patents and Registration of Finland, Austrian Patent Office and European Patent Office. The International Searching Authority carrying out the main search cannot be selected as Authority specified for supplementary search (SSA).

Objective of the search: to give applicants the opportunity to reduce the likelihood of new prior art in national phase and to obtain an additional search report taking into account the growing linguistic diversity of the prior art documents.

Time limit: the request must be filed before the expiration of 19 months from the filing date or, if available, the priority date and fees must be paid to the International Bureau within 1 month from filing of the request.

Time table: Supplementary Search Authority (SSA) begins with Supplementary International Search (SIS) at the latest by the expiration of 22 months from the priority date. Supplementary International Search Report (SSR) is to be established within 28 months from the filing date or, if available, the priority date. SSR is transmitted to the applicant and International Bureau.

Applicants have the choice between two distinct procedures (PCT Chapter I and PCT Chapter II). If a request for an International Preliminary Examination is filed, the international application will follow the PCT Chapter II procedure (subject to the payment of the prescribed fee). If no IPE is requested, the international application will follow the PCT Chapter I procedure. An International Preliminary Report on Patentability (IPRP) for every application is now established. For Chapter I, this IPRP corresponds to the written opinion by the ISA and for Chapter II, this IPRP corresponds to the report established by the International Preliminary Examining Authority (IPEA). The main difference is that in Chapter I there is no applicant/examiner dialogue or amendments before the IPRP issuance, whereas in Chapter II the dialogue with examiner and amendments are possible before the IPRP issuance. If the applicant does not request an IPE (PCT Chapter II), the International Bureau establishes an IPRP on the basis of the written opinion by the ISA. The IPRP (Chapter I) and any comments by the applicant are sent to designated Offices, and are made publicly available (but not “published” like the international application and the ISR), but not before the expiration of 30 months from the priority date.

Objective of IPRP Chapter II: to formulate a preliminary and non-binding opinion on the question as to whether the claimed invention appears to be novel, to involve an inventive step (to be not obvious), and to be industrially applicable. It does not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law.

Who may file a request for an international preliminary examination: the applicant must be a resident or a national of a Contracting State bound by Chapter II of the PCT.

Effect: for Contracting States where the 20-month time limit is still valid, one effect is delaying the national phase until expiration of 30 months from the priority date.

Where to file: the request for an international preliminary examination must be directly submitted to the competent Examining Authority.

When to file: the time limit for filing the demand for an IPE is: 3 months after the issuance of the International Search Report and the written opinion of the ISA (or of the declaration under Article 17.2(a)), or 22 months from the filing date or, if available, the priority date, whichever expires later. The 19-month time limit to file a demand in order to postpone the time limit to enter the national phase from 20 to 30 months continues to apply in respect of States, which have notified the International Bureau that they will not apply the 30-month time limit under Chapter I.

Elected States: the election of the States is automatic and all-inclusive. It is no longer possible to exclude certain States from being elected; however, withdrawals of elections remain possible. It is sufficient that the demand be signed by one applicant but signature of all applicants is needed for withdrawals of demand or election.

Available since July 2012, the third party observations service allows third parties to submit prior art observations relevant to novelty and inventive step. The submission of observations is a web-based system using ePCT or web-forms in PATENTSCOPE. Third party observations are free-of-charge. Submissions are possible until the expiration of 28 months from the priority date. Applicants may submit comments in response until the expiration of 30 months from the priority date. Anonymous submissions of third party observations are possible. Third-party supplied documents will not be available via PATENTSCOPE but will be made available to International Authorities and national Offices.

Protection during the international application phase: the PCT guarantees that the international application has the effect of a national (or regional) application.

Delaying effect: in normal circumstances, the national phase will not begin before the expiration of 30 months from the filing date or, if available, the priority date or 20 months for Contracting States where the 20-month time limit for PCT Chapter I is still valid. The applicant will then have the international search report and the international preliminary opinion in his possession. The applicant may ask for an earlier start of the proceedings or examination of the application.

Amendments: may be introduced during the international phase. They may also be introduced before any of the designated Offices with a time limit of a minimum of 1 month.

Utility models: where utility models are granted, the applicant has the right to adapt his application to the requirements of that law (normally within 2 months from the start of the national procedure).

Decisions made in the international phase reviewed by the designated Offices: the applicant may ask, within 2 months from the date of notification, that the following decisions be reviewed:
(a) the receiving Office has refused to accept an international filing date because of certain defects in the application;
(b) the receiving Office has declared that the international application is considered withdrawn because of certain defects in that application or because of non-payment of the prescribed fees;
(c) the International Bureau has declared the application to be considered withdrawn because it has not received the record copy within the prescribed time limit;
(d) the receiving Office has declared that the designation of any given State is considered withdraw.

Fees: national fees are to be paid to each designated Office not later than at the expiration of 30 months (31 and more months applicable for some Offices) from the priority date, and 20 months for Contracting States where the 20-month time limit (PCT Chapter I) is still valid.

Translation: before the expiration of 30 months or 20 months from the filing date or, if available, the priority date, translations of the application have to be filed, where necessary, at the national Patent Offices. If the claims have been amended, according to Article 19, translation of the original claim as well may be requested. If the scope of any granted patent exceeds that of the international application, as the result of an incorrect translation, the competent authorities of the Contracting States may limit the scope of the patent accordingly.

Representation: the national laws are applicable.

PCT Applicant’s Guide, published by WIPO in English, French, Spanish and Russian. The Guide is available via the Internet on the PCT website at www.wipo.int/pct/en/appguide/index.jsp

The complete texts of the PCT and the PCT Regulations are obtainable from WIPO (Geneva) in the following languages: Arabic, Chinese, English, French, German, Italian, Japanese, Portuguese, Russian and Spanish. Up-to-date versions of the PCT and Regulations may be browsed or downloaded from the PCT website at www.wipo.int/pct/en/texts/index.htm

Up-to-date news about the PCT is available from the PCT Newsletter, a monthly publication (in English only). Since January 2008, it is available only on the Internet. Subscription to the PCT Newsletter is highly recommended for regular users of the PCT. The PCT Newsletter is available on the PCT website www.wipo.int/pct/en/newslett/. This web page also contains a fully searchable collection of all practical advice published since 1997, plus back issues of the PCT Newsletter.

Published PCT applications (together with the international search report) are available from WIPO at PatentScope® (Search International and National Patent Collections) https://patentscope.wipo.int/search/en/search.jsf

Patent Agents

Any person having the right to be appointed before a national Office may be appointed.