An Overview of the Patent Cooperation Treaty and Its Procedures
Patent Cooperation Treaty?
A patent plays an imperative role in protecting an invention by restricting any other entity except the inventor, patentee, or the assignee from commercially exploiting or duplicating the invention. Since patents are territorial, an inventor should file the patent in several countries to ensure its all-around protection on a global level. The filing of a patent in several countries is now made a plain sailing process and is facilitated through a system established by the Patent Cooperation Treaty. The Patent Cooperation Treaty, a Treaty that was concluded in 1970, has established a process for filing patent applications in each of its member states. When an inventor files a patent under the Patent Cooperation Treaty, the application is termed as an ‘international application’. Currently, over 150 states are the contracting states of the Patent Cooperation Treaty. Thus, the Patent Cooperation Treaty facilitates the protection of a patent on an international level through a single international application rather than filing separate applications in different countries. However, granting a patent is subject to the decisions taken by individual national or regional patent offices of the contracting countries. The period wherein a regional or a national patent office takes their time to grant a patent to an invention is termed the ‘national phase’. The Patent Cooperation Treaty was signed on the last day of the Washington Diplomatic Conference on the Patent Cooperation Treaty, held in Washington DC. In 1978, only 18 countries were signatories of the Treaty. Since then, the Treaty was amended three times: in 1979, 1984, and 2001.
[Image Source: WIPO]
Procedure for filing a patent under the Patent Cooperation Treaty
1) Filing of the ‘international application’
Typically, the filing of a patent as per the Patent Cooperation Treaty consists of six procedures. The first procedure under the Patent Cooperation Treaty includes filing the international application at a national or a regional patent office (also termed as the ‘Receiving Office’). The international application may also be filed at the World Intellectual Property Organization (WIPO). The application must comply with the Patent Cooperation Treaty’s formality requirements and must be drafted in a single language that the Treaty permits. Currently, the Treaty permits the international patent application to be filed in English, French, German, Japanese, Russian, Spanish, Chinese, and Arabic. One of the most prominent benefits of filing an international patent application as per the Treaty is that the applicant must only pay a single set of fees for filing the patent in multiple countries.
2) Patent searches and written opinions produced by International Searching Authorities
The second step includes a thorough patent search which is carried out by the International Searching Authority. The applicant will be required to select an International Searching Authority who may perform a prior art search. A prior art search will examine pre-existing patents and other patent-related literature related to the applicant’s patent application. Through this search, the patentability of the applicant’s invention is determined. Additionally, the Authority also provides a written opinion regarding the probability of the applicant’s invention being patented. Consequently, the applicant is also made aware of the expenses, application fees, translation costs, and other expenses that they may incur for registering the patent in each country.
3) Publishing of international application
In the third step, the international application is published by the WIPO after 18 months from the filing date or the earliest priority date. The application is published in one of the ten languages that are permitted under the Treaty. However, the contents of the application can be disclosed to the world in advance if the applicant expressly requests it. It is pertinent to note that 28 months from the priority date of the international application, any third party is permitted to file observations pertaining to the application. Such observations can be submitted anonymously or for free of cost.
4) National or regional phase
The final step is termed the ‘national phase’. Typically, 30 months from the filing date of the patent application or the earliest priority date of the application, the international phase comes to an end. During the national phase, an applicant may attempt to obtain patents from the national or regional patent offices of the countries in which the applicant wants to obtain a patent. An applicant can also request the expedition of the national and regional phases. However, suppose the applicant does not pursue the national or regional phase within the time limit set by national laws of the countries from which the applicant aims to obtain a patent, in that case, the international application may not obtain a patent from the national or regional patent offices.
Optional steps under the Patent Cooperation Treaty procedures
1. Supplementary International Search (SIS)
A Supplementary International Search can be defined as an international search that is additional to the ISA's main international search. Typically, a Supplementary International Search is conducted upon the applicant’s request. A Supplementary International Search significantly reduces the risk of new prior art being discovered in the national phase.
2. International preliminary examination
An international preliminary examination is an additional step that is carried out upon the applicant’s request. An additional “patentability analysis” is conducted to analyze the chances of obtaining a patent in various national and regional patent offices through an international preliminary examination. This examination is conducted prior to entering the national phase. Therefore, an applicant can evaluate if a particular invention is likely to obtain a patent in a particular patent office before incurring the required expenses to facilitate the national phase.
Disadvantages of the Patent Cooperation Treaty
While the Treaty provides uniform formality requirements, international searches, and a centralized international publication system, the Treaty’s procedures also come with certain disadvantages. For one, the system only facilitates the registration of utility patents and not design-related patents. Secondly, the Patent Cooperation Treaty system is considered an expensive process since the application is prosecuted in each national and regional patent office separately. In addition to the costs incurred by the applicant to prosecute the application in each national or regional office, the applicant has to also pay for the attorney fee in the international phase. However, the benefits of the Patent Cooperation Treaty outweigh the negligible disadvantages it comes with. In sum, the Patent Cooperation Treaty system has significantly simplified the process of filing a patent in multiple countries. Consequently, it has also fuelled the spread of technological developments on an international scale over the years.
Author: Sanjana, a BBA LLB student of Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to us GLOBAL PATENT FILING in case of any queries please contact/write back us at firstname.lastname@example.org.