PROTECTION OF INVENTIONS THROUGH PATENT COOPERATION TREATY (PCT), 1970 Anubha Singh* Protection and enforcement of Intellectual Property

Rights (IPR) are major components of international trade and scientific corporation and Patent Cooperation Treaty (PCT) has ushered an era of international cooperation in the diverse intellectual property systems with reference to patents. Meaning of Patent A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. In order to be patentable, the invention must fulfil certain conditions.1 Patent Cooperation Treaty (PCT) 1970 The Patent Cooperation Treaty (PCT) is the special agreement under Paris Convention for international cooperation towards harmonization of patenting at the international level. The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single international patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the national phase. It doesnt provide for the grant of international patents. The responsibility for issuing patent remains solely with the patent offices of member countries as per their rules.2 Emergence of Patent Cooperation Treaty From an unstructured beginning around the Fifteenth Century in Italy, the patent system has attained some formal status through specific statutes in various countries around the world. With

* LL.M student at Rajiv Gandhi National University of Law, Punjab, Email- anubha0608@gmail.com.
1 2

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the onset of Industrial Revolution, the modern patent system was catalyzed for commercial exploitation of inventions. From time-to-time, the patent system has undergone changes to keep pace with rapid advances in science and technology as well as with the evolving international trade practices. The traditional patent system requires the filing of individual patent applications in each country where the patent protection is sought, with the exception of various regional patent systems such as African Intellectual Property Organization (OAPI) System, the Harare Protocol System of the African Regional Industrial Property Organization (ARIPO), the Eurasian Patent System, and the European Patent System. Most importantly, the applicant has to incur expenses for translation, patent attorneys or agents in various countries and payment of fees to the Patent Offices, all at a time at which he often does not know whether he is likely to obtain a patent or his invention is really new compared with the state-of-the-art. Moreover, every single Patent Office with which an application is filed has to carry out a formal examination of every application filed with it. Each Patent Office has to make a search to determine the state-of-the-art in the technical field of the invention and has to carry out an examination as to its patentability. In order to reduce the duplication of the effort both for the applicants and the National Patent Offices, an idea was mooted in 1967 to bring about international cooperation in patenting. As a result, a draft of an international treaty was prepared by the United International Bureau for the Protection of Intellectual Property (BIRPI), the predecessor of World Intellectual Property Organization (WIPO), which underwent revision later. Subsequently, a Diplomatic Conference held in Washington in June 1970 adopted a treaty called the `Patent Cooperation Treaty (PCT). The treaty came into force on 24th January 1978, and became operational on 1st June 1978 with an initial 18 contracting countries. As on 1st September 2003, as many as 122 countries are party to the PCT. India joined the PCT with effect from 7th December 1998. Currently administered by WIPO, the PCT is open to countries party to the Paris Convention for the Protection of Industrial Property. Instruments of ratification and accession must be deposited with the Director General of WIPO. Thus, the emergence of PCT is one of the major attempts to simplify the patent system at the international level.3 PCT is facilitating treaty and one of the most significant advancement in international cooperation in the fields of patents. The principle objective of the PCT is to provide a more

Retrieved from < www.wipo.int/pct/en/texts/articles/atoc.htm > on 5 November, 2012 at 2.15 IST.

efficient, effective and economical means for protection in several countries. As per conventional system, an inventor has to file separate applications in each country where he desires to seek protection for his invention. Under PCT system, the inventor has required to file a single application in one language having effect in each of the countries parties to the PCT, by indicating the names of the countries where he desires the protection. This system also involves the formal examination of the international application by a single office and also international search on the prior art. The national patent offices are free to examine the application form from perspective of national legislations and charge the fees for the same.4 Procedure under PCT The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO) and offers patent applicants an advantageous route for obtaining patent protection internationally.5 Invention Is the object of International Authorities

PCT International Applications

are filed with

receiving offices (national patent offices or international bureau)

Transmit applications to

Patent grants

Designated offices

WIPO Communicates to

Publishes PCT International Applications

Rajeev Ranjan, PCT system and its impact on Developing Countries, Journal of Intellectual Property Rights, Vol. 8 Jan 2003, pg 50- 57. 5 Retrieved from < www.wipo.int/pct/en/ > on 6 November, 2012 at 2.31 IST.

Filing - An international application, containing a request, claiming priority on one or more claims, one or more drawings (where required), and an abstract, should be filed. The application shall, be in a prescribed language, comply with the prescribed physical requirements, comply with the prescribed requirement of unity of invention, be subject to the payment of the prescribed fees. Any resident or national of a Contracting State may file an international application and the international application shall be filed with the prescribed receiving Office, which will check and process. Any international application fulfilling the requirements shall be equivalent to a regular national filing. International Search Applicant can file a single, uniform international application in one language to seek patent protection in a large number of countries, thereby avoiding the need to file several separate applications, possibly in different languages, at each national or regional patent office. At the moment of filing, all Contracting States are automatically designated in the application, but the applicant ultimately decides in which national or regional offices to seek patent protection. It should be noted that an international patent, as such, does not exist and that the granting of patents remains under the control of national or regional patent offices in what is called the national phase. One copy (record copy) of the international application shall be transmitted to the International Bureau, and another copy (search copy) shall be transmitted to the competent International Searching Authority. The record copy shall be considered the true copy of the international application. The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit. Each international application shall be the subject of international search. The objective of the international search is to discover relevant prior art. International search shall be made on the basis of the claims, with due regard to the description and the drawings. The international search report shall be established within the prescribed time limit and in the prescribed form and shall be transmitted by the International Searching Authority to the applicant and the International Bureau.

International Publication The International Bureau shall publish international applications promptly after the expiration of 18 months from the priority date of that application or before if the applicant asks for it. The language and form of the international publication and other details are governed by the Regulations. The international bureau has the power to omit any content which it thinks contrary to the public policy or morality. So, the international phase usually lasts for a period of 18 months and mainly consists of a formal examination of the application, international search, optional supplementary international search, optional international preliminary examination and international publication of the application. As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications. The International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant. The national Office shall also not allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the date of the international publication of the international application, date of the receipt of the communication of the international application, date of the receipt of a copy of the international application. The applicant shall furnish a copy of the international application and a translation thereof, and pay the national fee, to each designated Office not later than at the expiration of 30 months from the priority date. No designated Office shall process or examine the international application prior to the expiration of the applicable time limit of 30 months. International Preliminary Examination On the demand of the applicant, his international application shall be the subject of an international preliminary examination. Any applicant who is a resident or national of a Contracting State and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination. The

demand for international preliminary examination shall be made separately from the international application. The demand shall contain the prescribed particulars and shall be in the prescribed language and form. The objective of the international preliminary examination is to formulate a preliminary and nonbinding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. The international preliminary examination report shall state in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability. The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall also be accompanied by such other observations as the Regulations provide for. National phase After the end of the PCT procedure, inventor can start to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which he want to obtain them. No national law shall require compliance with requirements, except provided in this treaty, relating to the form or contents of the international application. Where the applicant, for the purposes of any designated State, is not qualified according to the national law of that State to file a national application because he is not the inventor, the international application may be rejected by the designated Office. Under the PCT, applicants have at least 18 months from the date on which the PCT application was filed before entering the national phase at individual patent offices. This 18-month delay affords the applicant additional time compared to that provided under the Paris Convention to evaluate the chances of obtaining a patent and plan how to use the invention commercially in the countries where protection is sought. In the national phase, each patent office is responsible for examining the application in accordance with its national patent law and deciding whether or not to grant patent protection. The time required for the examination and grant of a patent varies across patent offices.

Objectives of PCT The PCT system offers investors and industry a better route for obtaining patent protection internationally as by filing one international patent application protection for an invention can be simultaneously sought in more than 142 countries which are signatory to PCT. This system advantageous both to the applicant and patent offices of PCT member countries as there is certain uniformity in the formality requirements, the international search and the preliminary examination report and the centralised international publication provided by the PCT system. While the traditional patent system requires the filing of individual patent application in each country where the protection is sought which involves not only preparation and filing of applications in several countries in different languages in different systems but also added cost in terms of payment of fees to the patent offices, expenses on translation, fees to attorney etc. The aim of PCT is generally to facilitate the attainment of the larger objectives of patent systems 1. 2. 3. 4. 5. Making a contribution to the progress of science and technology. Providing optimum legal protection to investors. Simplifying and rendering more economic protection to the investors. Facilitating and accelerating access by the public to technical information. Fostering and accelerating the economic development of developing countries.

The principle objectives of PCT specifically are 1. To offer solutions and options for addressing the limitations of traditional patent system,

especially when patenting is desired in many countries. 2. To simplify (more efficient and economical) the procedure for seeking patent protection

for the users of the patent system (applicants and investors), patent offices. The PCT is useful as it gives more time and information to the applicant in order to 1. Evaluate and better the changes of protecting the invention before major costs in foreign

countries are incurred. 2. Keep options while investigating its commercial possibilities abroad.

3.

Help obtain more reliable patents aboard.

Apart from above mentioned advantages PCT system also helps in 1. 2. 3. 4. 5. 6. Improving the status of the country in the area of intellectual property worldwide. Paving the way for generating foreign exchange through exports. Encouraging filing of applications in other countries. Efficient patent portfolio management. Allowing staggering of expenses. Allowing additional time for taking more informed decisions.6

Role of WIPO in the PCT 1. 2. 3. 4. 5. receiving and storing all application documents, performing a formalities examination, publishing the international application on WIPOs online database patent scope, publishing data about the PCT application as prescribed in the treaty and regulations, translating various portions of the PCT application and certain associated documents into

English and/or French, where necessary, 6. 7. communicating documents to Offices and third parties, and providing legal advice on request to Offices and users.

WIPO also: 1. 2. 3. provides overall coordination of the PCT system; provides assistance to existing, new and potential Contracting States and their Offices; provides advice on implementing the PCT in the national legislation and on setting up publishes the PCT Applicants Guide and the PCT Newsletter; creates and disseminates PCT information via the PCT website, webinars, and through

internal procedures in the Contracting States patent Offices; 4. 5.

telephone and e-mail assistance; 6. Organizes and gives PCT seminars and training courses.

Organization and Administration

6

Rajeev Ranjan, PCT system and its impact on Developing Countries, Journal of Intellectual Property Rights, Vol. 8 Jan 2003, pg 50- 57.

The PCT is an ongoing international attempt of WIPO to rationalize and facilitate a costeffective system for filing patents internationally, conducting prior art searches and for the examination of patent applications. The PCT has created a Union, which has an Assembly. For effective discharge of its responsibilities, the PCT is assisted by a number of organs, as under: a) International Patent Cooperation Union It is constituted by the countries party to the treaty for bringing about cooperation in the filing, searching and examination of applications for the protection of inventions, as well as for rendering special technical services. b) Assembly Every country party to the PCT is a member of the Assembly. Important tasks that are assigned to the Assembly include i) amendment of the regulation issued under the treaty (numbering 69 Articles), ii) adoption of the biennial programme and budget of the Union, and iii) fixing of certain fees connected with the use of the PCT system. c) International Bureau It performs the administrative tasks concerning the Union. It publishes the PCT Gazette and brings out other publications. d) Periodic Meeting The overall functioning of the PCT is streamlined through periodic meetings of the following: i) PCT Assembly (ordinary and extraordinary sessions) ii) PCT Committee for Administrative and Legal Matters; iii) PCT Committee for Technical Cooperation; iv) PCT Informal Consultation Meeting on Electronic Filing; v) Meeting of International Authorities under the PCT; vi) Committee on Reform of the PCT; and vii) Working Group on Reform of the PCT. e) Information Service

In order to facilitate the member countries, WIPO brings out the following publications on the PCT and its functioning:

i)

PCT

Applicants

Guide

in

English

and

French

in

two

volumes;

Volume I : Introduction to the International Phase Volume II : Introduction to the National Phase ii) iii) PCT Newsletter in English (monthly); and PCT Information Service

Impact of PCT on India It is heartening to note that more and more companies and individual applicants are using the PCT route for filing applications in various contracting states. The simple reason behind this is that the PCT procedures are being continually revised and refined to make it cost effective, easy and advantageous to greater number of applicants. No other IPR system provides such flexibility to suit the needs of the applicants. Interestingly, the developing countries are striving hard for making inroads for their own products in the global market and are joining such international agreement in large numbers. This strategic policy not only boosts the investors confidence but also adds economic value to promote intellectual property management in their national economies. PCT also offers practical ways of reducing the administrative burden on individual patent offices by facilitating search and examination and elimination much of the formality of checking data entry and processing and publication. India acceded to the Paris convention for the Protection of Industrial Property in December 1998 and joined the PCT union at the same time. The accession to the PCT is a landmark decision in the history of the patent system in India. It has opened the gateway for entry of the advance technology in India. In the year1999, a beginning was made by posting 61 PCT applications origination from India. Since the joining of the PCT India has been designated in over 2,50,000 international applications. The entry into the national phase has already commenced from August 2000 and over 13,000 such applications have been received till now. Thus, it is seen that after accession of India to the PCT, Indian inventors have started taking full advantage of the PCT system and a lot of applications from aboard are also being received under the PCT system, accounting for the major proportion of applications received by the patent offices in India.7

Rajeev Ranjan, PCT System and its impact on Developing Countries, Journal of Intellectual Property Rights, Vol. 8 Jan 2003, pg 50- 57.

Conclusion As a means for filing the unifying the patent filing procedure, the PCT has been very successful. The PCT is now by far the preferred means if an application is to be filed in a number of states. However, as a means for unifying the search and examination procedure, it has not been such successful.8 Several advantage of the PCT in terms of enabling more applicants from developing and least developed countries to seek patent protection in more contracting states, opportunities arising for technology transfer from foreign countries and in turn stimulating technology related FDI, development of local industries using better and appropriate technology, upgrading of technical skills and providing a stimulus for economic and technological development etc. are there for all to see. Other than the general economic benefits to the national economy in terms of better technology transfer, creation of jobs etc. there are several advantages to the contracting states in terms of strengthening of economic cooperation as well as with patent offices greater awareness and publicity among the applicants about the countries patent system. Access to PCT for the countrys investor and industry, facilities access to more technological knowledge and inflow of latest technology is certainly beneficial.9

8 9

WIPO Economic and Statistics series 2012, PCT Yearly review the International Patent System at pg 14. Rajeev Ranjan, PCT system and its impact on Developing Countries, Journal of Intellectual Property Rights, Vol. 8 Jan 2003, pg 50- 57.