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Principal Objectives of the PCT

The principal objective of the PCT is to simplify and to render more effective and
more economical—in the interests of the users of the patent system and the
offices that have responsibility for administering it—the previously established
means of applying in several countries for patent protection for inventions. Before
the introduction of the PCT system, virtually the only means by which protection
of an invention could be obtained in several countries was to file a separate
application in each country; these applications, each being dealt within isolation,
involved repetition of the work of the filing and examination in each country.

To achieve its objective, the PCT:

• Establishes an international system which enables the filing, with a single


patent Office (the “Receiving Office”), of a single application (the
“International Application”) in one language having effect in each of the
countries which are party to the PCT which the applicant names
(“designates”) in his application;
• Provides for the formal examination of the International Application by a
single patent Office, the Receiving Office;
• Subjects each International Application to an international search which
results in a report citing the relevant prior art (mainly published patent
documents relating to previous inventions) which may have to be taken
into account in deciding whether the invention is patentable; that report is
made available first to the applicant and is later published;
• Provides for centralized international publication of International
Applications with the related international search reports, as well as their
communication to the designated Offices; and
• Provides the option of an international preliminary examination of the
International Application, which gives to the Offices, that has to decide
whether or not to grant a patent, and to the applicant, a report containing
an opinion as to whether the claimed invention meets certain international
criteria for patentability. The procedure described in the preceding
paragraph, comparing it with the traditional procedure, is illustrated by two
timelines such as chapter I and chapter II of PCT. It is commonly called
the “International Phase” to describe the first part of the patenting
procedure, whereas one speaks of the “National Phase” to describe the
last part of the patent granting procedure which, as explained in paragraph
above, which is the task of the designated Offices, that is, the national
Offices of, or Regional offices acting for the countries which have been
designated in the International Application. (In PCT terminology, a
reference to “national” Office, “national” phase and “national” fees,
includes the reference to the procedure before a regional patent Office).

Under the PCT system, by the time the International Application reaches the
national Office, it has already been searched by the International Searching
Authority and possibly examined by an International Preliminary Examining
Authority, thus providing the national patent Offices with the important benefit of
reducing their work loads since they have the benefit of these international phase
procedures and thus need not duplicate those efforts. Further objectives of the
PCT are to facilitate and accelerate access by industries and other interested
sectors to technical information related to inventions and to assist developing
countries on gaining access to technology.

The Patent cooperation Treaty is an agreement for international cooperation in


the field of the patents, which provides a unified procedure for filing patent
applications. Mainly, it is a treaty for cooperation and rationalization with regard to
the PCT filing procedure, searching and examination of patent applications and
the dissemination of the technical information contained therein. To minimize the
cost of Patent filing and prosecution in India, there are some essential points to
file a pct application in India.

In the event you are filing a PCT national phase application, provide your
associate in India following information:

1. Application details including title of the invention, addresses, names, and


Nationality of the inventors; applicants.
2. Complete specification as filed before the International office with claims,
abstract and drawings.
3. English translation of the International Application if published and filed in
language other than English.
4. Certified copy of the priority documents.
5. English translation of the priority documents, if published and filed in
language other than English.

PCT NATIONAL OR INTERNATIONAL PATENT SEARCH PROCEDURE

The main procedural steps that any PCT international patent application goes
through before the PCT international patent searching Authority include:

1. Conducting the PCT international patent search,


2. preparing the PCT international patent search report, and
3. establishing a written opinion.

The main purpose of the PCT patent search is to discover relevant prior art. "Prior
art" consists of everything which is essential to the public anywhere in the world
by means of written disclosure. It is "relevant" in respect of the PCT international
patent application if it can help in determining whether or not the claimed
invention is new, whether or not it involves an inventive step and whether the
making available to the public occurred prior to the PCT international filing date.
The PCT international patent search is made on the foundation of the claims, with
due regard to the description and the drawings contained in the PCT international
patent application. The results of the PCT patent searches are set out in the PCT
international patent search report. A pct patent search is made by an authorized
International Searching Authority to find the most relevant prior art documents
regarding the claimed subject-matter.

The national stage in India is the second of the two major phases of the PCT
procedure. Firstly, the applicant has to select the country to file the application,
after that national phase starts. If applicant selects the PCT application in India,
which is chosen in the demand for preliminary examination filed within 19 months
of the priority date. Therefore, the applicant has to enter the national stage within
31 months from the priority date. However, the time limit for national stage entry
in India is only 21 months from the priority date, when India is not selected by the
applicant in the demand for preliminary examination.

We require the basic requirements for entry into national phase in India:

1. Application set out the title of the invention, names, addresses, and
Nationality of the inventors and applicants.
2. Complete Requirement as filed before the International office with claims,
drawings, and abstract.
3. Prescribed Fees in demand draft/cash
ADVANTAGES

There are several advantages to the PCT process. First, the applicant can file a
single PCT application rather than filing a series of national applications. The
single PCT application is much less expensive than the individual national filings.
Although the applicant will eventually be required to incur a cost similar to the
national filings when the PCT application is entered in each national patent office,
the PCT procedure allows these costs to be delayed for up to eighteen months.
This period of time will allow the inventor a better chance to analyze the
patentability and profitability of the invention, and therefore the applicant can
make a more informed decision regarding where the patent application should be
filed.

A second advantage of the PCT process is that the evaluation of patentability


made by the PCT governing body handling the examination should lead to more
uniform results in connection with the patentability of the invention in each
country. Although individual countries are not bound by the determination made
during the PCT process, a positive PCT decision on patentability is often
persuasive evidence in a national patent office.

Additional advantages of the PCT process include advanced application


manipulation designed to achieve such results as obtaining an early search result
from the European Patent Office; delaying entry into the U.S. Patent Office, and
utilizing the patentability requirements of the PCT document rather than the U.S.
Patent Act. These advanced applications should be discussed with a qualified
patent attorney with experience in handling PCT applications.
WHY AND HOW THE PCT IS USED – ADVANTAGES AND PROBLEMS

Michael J Caine
Convenor, International Patents Committee
Institute of Patent and Trade Mark Attorneys of Australia

The Patent Cooperation Treaty (PCT) provides a convenient and cost effective
way for patent applicants to pursue patent protection simultaneously in several
different countries. The benefit to patent applicants of proceeding internationally
via the PCT route is illustrated by the extent to which they have adopted the PCT
as their preferred route for pursuing international protection. Unfortunately, the
success of the PCT might also prove its downfall, as rules change to assist
Offices cope with the huge increase in work load brought about by increased
PCT usage. This paper discusses the advantages of the PCT route for
international patent protection relative to separate national filings, and discusses
some problems with the PCT system for applicants, as well as problems for third
parties.

The advantages of the PCT system for applicants are well known to all. One of
the primary advantages of pursuing international patent protection via the PCT
route is that a single filing with a single Receiving Office within 12 months of the
filing of a priority application can be considered to comply with the 12 month
Paris Convention deadline in all countries which are members of the PCT. This
is achieved by filing a single specification, filling out a single PCT Request form
and providing a single certified copy of the priority application. Where the
Receiving Office is also the office where the priority application was filed, the
priority document can be supplied by crossing a box on the PCT Request form.

An important advantage to applicants in filing a PCT application is that this effect


can be achieved upon payment of a single modest fee, rather than paying
separate filing fees in each of the designated countries. While these national
fees will need to be paid when national phase entry is confirmed, the fact that the
payment of these filing fees is deferred is a substantial advantage for applicants.

By deferring the payment of national filing fees, the PCT applicant is also able to
defer making a decision on the countries where patent protection will ultimately
be pursued. This deferral period, which is generally 18 months, allows the patent
applicant to assess suitable markets for the invention, and to assess the merits
and likely commercial success of the invention.

When a PCT application is filed the applicant is issued an International Search


Report (ISR) which, if well conducted, provides the applicant with a useful
indication of the prior art against which the invention will be assessed. As this
International Search Report is issued prior to international publication, the
applicant is afforded an opportunity to withdraw the application on receipt of an
unfavourable ISR prior to publication of details of the invention. Under the
enhanced international search and preliminary examination system to be
implemented next year, the ISR will be accompanied by a Written Opinion on
patentability. The applicant is also permitted an opportunity under Article 19 to
amend the claims of the application to avoid prior art cited in the ISR.

Since it is possible to pursue one or more national filings in parallel to the PCT
application it is possible for an applicant to obtain multi searches simultaneously,
thereby obtaining a better assessment of the prior art against which the invention
will be judged. This parallel processing is often used in countries where
applicants have a choice of International Searching Authority, such as in the
United States.

Another benefit of the PCT to patent applicants is that they can arrange for an
international-type search under Article 15(5) of the PCT even prior to the filing of
the international application. If a PCT application is subsequently filed, the
applicant may receive a reduction in the search fee component of the
international application fee as a result of the earlier search.

Under the PCT the applicant also has the opportunity to file a Demand for
International Preliminary Examination, which may be accompanied by
amendments to the description and claims. Until recently, one of the main
incentives for filing the Demand was the reward of a 10-month extension of the
national phase entry deadline. This incentive no longer exists. While the filing of
the Demand could result in the issuance of a clear International Preliminary
Examination Report (IPER), the International Preliminary Examiner generally
issues a Written Opinion drawing attention to any perceived deficiencies in the
application. Where a Written Opinion issues the applicant has the flexibility to
adopt a number of strategies for response, depending on the content of the
Written Opinion and the particular circumstances of the applicant. For example,
where the objections raised relate to clear matters of novelty and clarity, the
applicant may respond by proposing amendments that remove these
deficiencies, thereby allowing the International Preliminary Examiner to issue a
clear report. Such a clear report may be important for an individual inventor or a
start-up company that needs to rely on investors for the protection of the
invention and its subsequent exploitation. It may also be important where the
applicant wishes to seek patent protection in developing countries or other
designating countries that rely on PCT reports in deciding whether or not to grant
patents.
Where the objections raised in a Written Opinion relate to matters of inventive
step the applicant may choose not to respond to the Written Opinion and allow
the IPER to issue in the form of the Written Opinion. This would allow the
applicant to address the inventive step issues separately before each national
office, and in accordance with national inventive step law and practice. Another
situation where an applicant might not respond to a Written Opinion is where the
applicant has concerns that the International Preliminary Examiner may not be
readily persuaded to remove his objections. In this case the filing of a response
may result in the issuance of an IPER with rejections which are more detailed
and more substantiated than the rejection of the first Written Opinion. Since a
report of this nature may interfere with the applicant's chances of obtaining broad
protection in a number of countries which place reliance on the IPER, an
applicant may choose not to risk arguing an objection with an International
Examiner. For most applicants though, the International Preliminary Examination
procedure provides an opportunity to address patentability issues with a single
Examiner, usually in their own country, language and time zone. In fact, where
International Preliminary Examination results in a clear report, it is likely that
prosecution of the national phase application in that country will proceed on a
similar basis. In Australia, it is usual for the Australian national phase application
to be given to the Examiner who performed the International Preliminary
Examination.

Further flexibility is provided to the PCT applicant when the national phase entry
deadline approaches. If the applicant requires further time to raise funds or
assess the potential of the invention the applicant can take the step of
withdrawing the priority claim. Of course the applicant will only take this step if
unaware of any relevant intervening publications. Withdrawal of the priority claim
provides a further 12 months before national phase must be entered. Some
applicants also commence the national phase processing procedure in some
countries prior to withdrawal of the priority claim thereby providing a further 12
months for national phase entry on a non-convention basis within the next 12
months.

Despite the enormous advantages associated with pursuing international patent


protection via the PCT route, and while a number of proposals to amend the PCT
are due to come into effect next year, there are still problems with the PCT.

One of the main problems with the PCT is that it does not specifically provide for
top-up searching, or allow applicants to request searches from more than one
International Searching Authority. Since the ISR is prepared prior to publication,
there is the potential for additional relevant patent applications to be published
subsequent to the preparation of the ISR. Since there is always the potential for
different patent applications covering the same inventions to be filed in similar
time frames, it will always be necessary for a top-up search to be completed. If
this is not included as part of the PCT procedure, then it must be performed by
the national offices. It must also be acknowledged that it is unlikely that a single
search will identify all prior art relevant to a particular invention. This is illustrated
by the frequency with which prior art is revealed by searching conducted by
national offices post national phase entry.

Further problems with the PCT for applicants appear to have been introduced
with the enhanced international search and preliminary examination system due
to commence next year. Under the new system the applicant may have no
opportunity to enter into a dialogue with the searcher or examiner to formally
contest an adverse patentability finding of the ISA, even if a Demand is
subsequently filed. According to the new procedure there is no opportunity to
formally respond to the Written Opinion on patentability issued by the
International Searching Authority. If a Demand is filed, this report is treated as
the first Written Opinion for the purposes of International Preliminary
Examination, and the new procedure appears to allow the IPEA to immediately
issue an IPER without any dialogue with the applicant. With the 10 month
extension of national phase entry on filing a Demand removed, and the prospect
of gaining little value from a Demand under the new system high, there is a
strong possibility that the number preliminary examinations performed by IPEAs
will decrease substantially. This is an unfortunate outcome for the PCT itself, as
well as for national offices. While the workload in the IPEA may be reduced in
the short term, overall the amount of examination work being done on each
family of patent applications by national offices will increase substantially.

A further problem with the PCT is the lack of quality control in relation to
international searches and IPE. A poor search or poor examination can have
disastrous consequences for the applicant, and can increase the workload at the
national offices, or alternatively, result in the grant of overly broad patents. This
is problematic for both the applicant and for third parties.

The PCT presents significant problems for third parties. One of the major
problems is the length of time it allows between filing a priority application and
commencing national phase processing. Although the international application
and ISR are published at 18 months, there is a further 18 months before an
applicant needs to commit to national phase in any particular country. This
provides a long period of uncertainty for third parties. This problem is
exacerbated by the lack of any central searchable database that provides third
parties with information regarding national phase entry.

Another significant problem for the PCT is that it only allows the filing of a single
specification. Until there is harmonisation of the requirements of a specification
and interpretation (as in the draft SPLT), problems will be created for the
patentee by insisting on a single specification to suit all national requirements.
Although the applicant is generally afforded an opportunity to file amendments
before the national offices to bring the specification into better conformity with
local practice and to maximise the ability to enforce protection in that jurisdiction,
the result must necessarily be a compromise.
Despite these problems with the PCT it is hoped that the international patent
community will work towards the implementation of changes which will make the
PCT more user friendly for applicants, more useful for national offices and less
problematic for third parties.

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