by KATZAROV SA, Patent & Trademark Attorneys,
European Patent Attorneys, Geneva, Switzerland
General Information
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”.