Anticipate This!™ | Patent and Trademark Law Blog

About the Patent Cooperation Treaty (PCT).

Posted in Practice Commentary by Jake Ward on November 8, 2006

The Patent Cooperation Treaty (commonly referred to as “PCT”) is a treaty administered by the World Intellectual Property Organization (WIPO).  This treaty allows an applicant to file a single application that can later be examined in any number of PCT member states

To initiate the PCT machinery, an applicant must first file a PCT application in a national Receiving Office, an example of which is the USPTO.  A single search is performed by the Receiving Office, from which an international search report (ISR) along with a written patentability opinion is generated.  Optionally, an international preliminary report on patentability (IPRP) is available upon demand.  The ISR and written patentability opinion effectively narrow the issues for the national offices, pointing out potential novelty destroying (“X”), obviousness indicating (“Y”), and technical background (“A”) references. Notably, many companies opt to file with the European Patent Office (EPO) in order to obtain an opinion from that office.

An international application is published 18 months after the filing or priority date.  Generally, the ISR is published along with the international application.  The PCT application must also enter national phase within 30 months of the PCT filing or priority date.  This 30-month period is a notable advantage to PCT filing.

It should be appreciated that the PCT does not automatically result in a patent being issued, and that an applicant must take measures to nationalize in each country desired prior to having the application examined and a patent issued.  For national phase filing in the U.S., for example, an applicant must file the national fee; a copy of the international application and an English translation of the international application, if it was filed in another language; preliminary amendments, if required, to the specification, drawings and claims, placing them in compliance with U.S. regulations (e.g., amending the claims to U.S. format if the PCT claims were in the so-called “Swiss-form”); an oath or declaration of the inventor complying with U.S. regulations; and a translation into the English language of any annexes to the IPRP, if conducted.

For more information on the PCT and going National Phase, I recommend checking out this WIPO site and  MPEP 1800 (Patent Cooperation Treaty).

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