The Patent Cooperation Treaty

And PCT application filing in India:

An Overview
The international patent regime is in fact a system of accumulated practices rather
than a set of fixed rules. It is the practice of International relations, in the matter of
legal protection of inventions. These relations are governed by, and are the result of
the national legislations and the international treaties, defining the treatment to be
granted to the foreigners in the grant of patent rights. As a general rule, an owner
of an invention desiring protection of patent rights in plurality of countries must
obtain such protection in each of the countries, separately. But the international
conventions and the treaties on the subject have to a great extent, tried to rectify
these hardships. Some of the important international conventions and the treaties in
this regard are:
1. Paris Convention for the Protection of Industrial Property;
• The convention establishing the World Intellectual Property Organization
• The Patent Corporation Treaty;
4. The Patent Law Treaty; &
5. The Agreement on Trade Related Aspects Of Intellectual Property Rights.
Treaties Administered by WIPO
WIPO administers 21 treaties in the field of intellectual property. Fifteen of
which are in the field of industrial property and 6 in copyright. These treaties can
be divided into three general categories.
The first category of treaties defines the internationally agreed basic
standards of intellectual property protection in each country. For instance three
treaties on industrial property fall in to this category, which are
• The Paris convention.
• The Madrid Agreement for the Repression of False and Deceptive
Indications on Goods, and
• The Lisbon Agreement for the Projection of Appellations of origin and
their International Registration..
The second category, known as the Registration Treaties, ensures that, one
international registration or filing will have effect in any of the relevant signatory
states. Five treaties on industrial property fall into this category. These are:
• The Patent Cooperation Treaty.
• The Madrid Agreement Concerning the International Registration of
Marks.
 • The Lisbon Agreement (This agreement belongs to both the first and
second category).
• The Budapest Treaty of the Industrial Recognition of the Deposit of
Micro-organism for the purpose of patent procedure; and
• The Hague Agreement concerning the deposit of Industrial Designs.
The services provided by WIPO under these treaties simplify and reduce the
cost of making individual applications or filing in all the countries, in which
protection is sought for a given intellectual property right.
The third category is the classification treaties, which create classification
systems that organize information concerning inventions, trademarks, and
industrial designs, into indexed, manageable structures for easy retrieval. Four
treaties, all dealing with industrial property fall into this group. These are:
• The international patent classification agreement.
• The Nice agreement concerning the international classification of
goods and services for the purposes of registration marks.
• The Vienna agreement establishing an international classification of
the figurative elements of marks, and
• The Locarno Agreement establishing an international classification for
industrial designs.

What is PCT
The most important universal treaty in the patent filed at this stage is the
Patent Cooperation Treaty (PCT). It establishes a system designed to assist
applicants, industry, and patent offices in avoiding a good part of the tremendous
duplication of work that is the consequence of individual national procedures for
the grant of patents in each country. The PCT allows the filing of a single
international patent applications for an invention having effect in a number of
designated PCT member countries.
Indeed the PCT does so by providing for the filing of applications at the
international level where the projection is sought in several countries. That filing
has the same effect as of the national applications have been filed separately in all
those countries. Not only the filing, but also the search for the prior art, the
publication for the application, and where relevant the examination as to the
patentability are done in the form of a centralized procedure. Thereafter, it is for
the applicant to decide whether he wants to continue the procedure to obtain a
patent before the national offices concerned.

Origin and History of PCT

It has been almost three decades since the concept of the Patent Cooperation
Treaty (PCT) was first put on paper. The original concept for PCT came in 1964
from the joint efforts of Martin A. Kalikow, the then Manager of International
Patent operations of GE and the Manager of IBM patent department, John
Shipman. This was picked up by USPTO and later BIRBI.
According to Massel and Tourowshi the development of Patent Cooperation
Treaty system began in 1966, when the United States suggested that a study be
conducted by the World Intellectual Property Organization to determine if some
means could be taken to reduce the duplication of search efforts for applications
filed in a number of foreign countries. The Executive Committee of the
International Union for the protection of industrial property invited, in September
1996, BIRPI (now known as WIPO) to undertake urgently a study of solutions to
reduce the duplication of the effort both for applicants and national patent offices.
In 1967, a draft of an international treaty was prepared by BIRPI and presented to a
committee of experts. In the following years, a number of meetings prepared
revised drafts and a Diplomatic Conference was held in Washington in June
1970,which adopted a treaty called the Patent Cooperation Treaty. The Patent
Cooperation Treaty or PCT came into force on January 24, 1978, and became
operational on June 1, 1978, with 18 countries becoming the signatories to the
treaty. The treaty was amended in 1979 and modified in 1984. It is a special
agreement under the Paris Convention open only to states which are party to the
Paris Convention. 109 states are party to the Patent Cooperation Treaty at present.
The list of these states is given in Annexure – 2 of this study. The filing of
international applications under the PCT commenced on June 1, 1978, upto the end
of 1999. The international Bureau of WIPO received a total of 489,365
international application before 1999. 47,023 international applications were
received in 1999. Till date the total number of the national filings received by
International Bureau of WIPO has gone upto 5,829,273.
 These brief indications of the progress of the Patent Cooperation Treaty
merely demonstrate the certainty that many more countries will become party to
the PCT in the coming years, and the number of applications field will continue to
increase significantly.
Objectives of Patent Cooperation Treaty
The main objective of PCT is to simplify the patent system and to render it
more effective and more economical, in the interests of the users of the patent
system and offices, which have responsibility for administering it.
To achieve the objectives, 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 party to the PCT, which the applicant names (“designate”) in
his application;
• provides for the formal examination of the international application by a
single patent office, the receiving offices;
• subjects each international application to an international search which
results in a report, citing the relevant prior art (mainly published patent
documents relating (previous inventions) which may have to be taken
into account in deciding whether the invention is patentable; that is made
available first to the applicant and is latter 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 an option for an international preliminary examination of the
international application which is given to the offices that have 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 above is commonly called as the “International
Phase” of the PCT procedure, whereas one speaks of “National Phase” to describe
the cost part of patent granting procedure, which is the task of the designated
offices, i.e. the national office of, or acting for, the countries which have been
designated in the international application. A comparison between the traditional
patent system and the PCT system is illustrated by the timelines given below:

Traditional Patent System

File application within 12 File applications

Locally months abroad

After local patent application is filed, within 12 months multiple foreign

applications may be filed under Paris convention. It Involves
• multiple formality requirements
• multiple searches
• multiple publications
• multiple examinations of applications
• translations and national fees required at 12 months
Some rationalization because of regional arrangements:
ARIPO, EAPO, EPO, OAPI
PCT System

16 18 19
20
Or even 30 Entry into
File within 12 national
Application months international international phase
File international search preliminary
Application examination

After local patent application is filed, within 12 months an international

application may be filed under the PCT claiming Paris Convention priority, with
national phase commencing at 20 or even 30 months at the option of the applicant.
Involves
• one set of formality requirements
• international search
• international publication
• international preliminary examination
• international application can be put in order (amended, or
modified) before national phase
• translations and national fee required at 20 or 30 months, and only
if applicant wishes to proceed.
Procedural Steps
The Patent Cooperation Treaty is divided into six chapters.
The first chapter deals with the international application and search, second
chapter deals with the international preliminary examination, chapter three deals
with the common provisions such as regional patent treaties, time limits etc.
Chapter four is about technical services and chapter five & six is about disputes.
The functioning of PCT system can be briefly described as follows
Filing an International Application
An international application can be filed by any national or resident of a
PCT contracting state in most cases with the national office, which will act as PCT
receiving office of the international Bureau constituted under Art.55 of the PCT.
The same national office can also act as receiving office as an option for nationals
and residents of all PCT contracting states. Where a designated state is party to the
European Patent Convention, the applicant “my” and in case of Belgium, France,
Greece, Ireland, Italy, Monaco and the Nether lands “must” opt for the effect of a
European (rather than a national) patent application. When a state is party to the
Eurasian Patent Conventions, the applicant may opt for the effect of
Eurasion(rather than national) patent. Where a designated state is party to the
Harare Protocol, the applicant, and in case of Swaziland, must opt for the effect of
ARIPO (rather than a national) patent application. Where a designated state is a
member of the African Intellectual Property Organization (OAPI), the effect is that
of a regional application field with OAPI.
Standardization and Cost of International Application
The PCT prescribed certain standards for international applications. An
international application which is prepared in accordance with these standards will
be acceptable, so for as the form and contents of the application are concerned, to
all the PCT contracting states, and no subsequent modifications, because of
varying national or regional requirements relating to the form or contents of the
international application different from or additional to those which are provided
by the PCT are acceptable.
Only a single set of fees is incurred for the preparation and filing of the
international application and the fees are payable in one currency and at one office,
(the receiving office). The national fees become payable much later in the filing of
application under PCT than in the traditional Paris Convention route.
The fee payable to the receiving office for an international application
consists of three main elements:
• The transmittal fee – to cover the work of the receiving office;
• The search fee – to cover the work of the search and examination.
• The international fee – to cover the work of the international Bureau.
The International Search
The international application is then subjected to what is called an
“International Search”. That search is carried out by one of the major patent
offices. The said search result in an “International search report”, that is, a listing
of the citations of such published documents that might effect the patentability of
the invention claimed in the international application.
The international search report is communicated to the applicant, who may
decide to withdraw his application, in particular, where the said report makes the
granting of patent unlikely.
If the international application is not withdrawn, it is, together with the
international search report, published by the international Bureau, and
communicated to each designated office.
The International Publication
International publication serves two main purposes:
• To disclose to the public the invention (i.e. in general, the technological
advance made by the inventor) and
• To set out the scope of the protection which may ultimately be obtained.
 International publication takes place, in general, in 18 months after the
priority date of the international publication.
International application is published in the language in which the
international application is filed, if that language is Chinese, English, French,
German, Japanese, Russian, or Spanish, the international application is published
in Chinese, French, German, Japanese, Russian or Spanish, but the little of the
invention, the abstract and the international search report, are published in English.
If the international application has been filed in any other language, it is translated
and published in English.

International Preliminary Examination

If the applicant decides to continue with the international application with a
view to obtaining national or regional patents, he can wait until the end of the 20 th
month, after the filing of the international application or, where that application
claims the priority of an earlier application, until the end of 20 th month after the
filing of the earlier application, to commence the national procedure before each
designated office by furnishing a translation (where necessary) of the application in
the official language of that office and paying to it the usual fees. This 20 months
period is extended by a further 10 months where the application chooses to ask for
an “international preliminary report”, a report which is prepared by one of the
major patent offices and non binding opinion of the patentability of the claimed
invention. The applicant is entitled to amend the international application during
the international preliminary examination. However, the advantages of
international preliminary examination can not be invoked by residents and
nationals of, Or in respect of, Spain since Spain chooses not to be bound by the
relevant provisions of PCT. The PCT application does not lead to a uniform patent
in all designated countries, however each PCT application is treated in each
designated state by usual procedure which nationally proceeds the grant of the
patent. PCT chapter II is a step in this direction by the international preliminary
examination, which should induce the PCT states to adopt in their country the
result of the international preliminary examination in their country. In practice
however, this is not the case particularly countries with a procedure for substantive
examination execute such a procedure nationally, even if an international
preliminary examination report exists. Each country loves its national habits. The
frustrating result for inventors and industry is significant expenses. In many
countries, patent protection is, for many enterprises, not affordable.
Advantages of PCT
Advantages for the Applicant
The applicant has 8 0r 18 months more than he has outside the PCT, to reflect on
the desirability of seeking protection in each foreign country for preparing the necessary
translation and paying the national fees. He is also assured that, if his international
application is in the form prescribed by the PCT, it cannot be rejected on formal grounds
by any designated office during the national phase of the processing of the application.
On the basis of the international search report, he can evaluate with reasonable
probability the chances of his invention being patented. The applicant has the possibility
during the international preliminary examination to amend the international application,
to put in order before the application being processed by the designated offices.
Advantages for Patent Offices
The search and examination work of the patent offices of designated state
can be considerably reduced or virtually eliminated. Further patent offices can
make economies in the cost of handling patent applications, since the work of
verification as to compliance with formal requirements becomes practically
superfluous.
Advantages for General Public
Since each international application is published together with an
international search report, third parties are in a better position to formulate a well-
founded opinion
about the patentability of the claimed invention.
Organizational Set Up
The PCT created a union. The union has an Assembly. Every state party to
the PCT is a member of the Assembly. Among the most important tasks of the
Assembly are the amendment of the regulations issued under the treaty, adoption of
the biennial programme and budget of the union and the fixing of certain fees
connected with the use of the PCT system. The Assembly of the PCT union
decided, with effect from Ist January, 1996, to establish a special measure for the
benefit of natural persons who are nationals of, and reside in a state where per
capita national income is below US$ 3,000. The benefit consists of a reduction of
75% on certain fees under the treaty.
 PCT FILING IN INDIA

National Phase Entry of PCT Application:

All PCT Applications designating India are considered as Indian

Patent Applications filed on the date of the International
Application. The period for entering into national phase is 31
months from the priority date.
Following are the basic requirements for entry into National
Phase in India:
(i) Application setting out the title of the invention, names,
addresses and Nationality of the inventors; applicants.
(ii) Complete specification as filed before the International office
with claims, drawings and abstract. If the application is filed
in a language other than English language then a certified
English translation of the same.
(iii) Prescribed Fees in cash/by local cheque /by demand draft.
Once the national processing has started, the following
documents have to be furnished either along with the
Application or within the stipulated time frame:
(i) Assignment deed where the applicant is not the inventor,
(ii) Declaration of inventorship by the Applicant,
(iii) Statement and undertaking regarding status of corresponding
Applications in other countries every six months,
(iv) Power of Attorney to agent (duly stamped),
(v) Copy of PCT/IB/304 or Priority document. If priority
document is in any language other than English an English
translation of the same along with certification in support of
the same.
(vi) International Search Report
(vii) International Preliminary Examination Report, if any.
At the time of national phase entry, amendments to the
International Application can be made, but such amendments
cannot go beyond the disclosure made in the original Application.
No extraneous or new matter is to be added.
It is possible to file a complete specification in respect of two or
more provisional specifications if the invention disclosed in them is
cognate or development of each other. However there would not be
any relaxation in payment of fees.
In case of PCT application request for Examination has to be filed
within 48 months from the date of priority.
After a request for examination is filed and the Application has
been published in the Patent Journal, the Controller ordinarily
assigns the Application to an Examiner within one month of
request. The Examiner will examine the Application and issue an
Official Report to the Controller ordinarily within one month but
not exceeding three months. The Controller shall then
communicate the report to the Applicant ordinarily within one
month. An application is examined for the following matters:
(i) Novelty,
(ii) Obviousness,
(iii) Utility,
(iv) Patentability under the Patents Act, 1970 and as amended, and
(v) Anticipation.
The Applicant is provided 12 months' time to respond to the issues
raised in the Examination report, without any extension
whatsoever. Once objections are satisfied, the application is
accepted by the Controller and, thereafter, an intimation for
acceptance is issued by the Patent Office and after disposal of any
pre grant opposition and passing of six months from date of
publication.
After expiration of six months from the date of publication and
disposal of any pre grant opposition, Grant of the Patent will be
published in the Patent Journal and a Letter Patent Document shall
be issued.

Grant of Patent is valid for 20 years from its date of International

filings. It must be renewed every year by paying prescribed fee
starting from the third year from the year of filing of International
Patent Application within three months of such intimation. After a
Patent has been granted, articles manufactured under the patented
invention may be represented as "Patented.'' The number of the
Patent must be indicated on the product.