The PATENT

COOPERATION TREATY
of 1970
by Aya Baclao
PCT presently has 152 contracting states
 The Patent Cooperation Treaty (PCT)
assists applicants in seeking patent
protection internationally for their
inventions, helps patent Offices with
their patent granting decisions, and
facilitates public access to a wealth of
What is it? technical information relating to those
inventions. By filing one international
patent application under the PCT,
applicants can simultaneously seek
protection for an invention in a very
large number of countries.
 No. They're actually very
Isn’t that what different. The main difference is that
unlike in Paris Convention which is
the Paris only concerned with reservation of
the applicant’s right of priority, the
Convention PCT is expressly equivalent to filing a
patent application in each designated
also does? PCT country.
Difference between PCT and Paris Convention's application processes
Suppose X wants patent grants from countries B, C, and D, through his home country, A.

PARIS CONVENTION PCT

INTERNATIONAL
APPLICATION APPLICATION
WITH"A" THROUGH " A"

APPLICATION APPLICATION APPLICATION APPLICATIONS

WITH "B", "C",
WITH " B" WITH " C" WITH"D " and "D".
 No. A PCT application does not result in
So...under the PCT, the automatic grant of a patent.
does the grant of a The grant of patent is a prerogative of
each national or regional authority. A
patent in the PCT application establishes a filing date
receiving country in all contracting states and must be
followed up with the step of entering
work as a grant by into national or regional phases to
all other contracting proceed towards grant of one or more
patents.
states?
 Difference between PCT and Paris Convention's application timelines

APPLICATION SEPARATE
w/ RECEIVING APPLICATIONS w/
PARIS STATE PRIORITY CLAIM TARGET COUNTRIES
CONVENTION (12months)

APPLICATION OPTIONAL
INTERNATIONAL PRIORITY CLAIM APPLICATIONS w/
w/ RECEIVING INTERNATIONAL
SEARCH
EXAMINATON (30months) TARGET STATES
STATE

PCT INT'L SEARCH INT'L EXAMINATION

REPORT* REPORT** PATENT GRANT DEPENDS
ON INDIVIDUAL TARGET
*Assists the applicant in determining **Allows the presentation of further STATE'S SCRUTINY.
what prior art the application might face amendments and arguments, just like
before the individual national patent offices. examination in front of the national
patent offices.
 Advantages and disadvantages of filing under the PCT:

ADVANTAGES DISADVANTAGES
• Convenient – Single application for multiple • Expensive – applicant has to pay much higher fees;
countries;
• Time-consuming – the entire process takes around
• Time-buying – applicant has more time to 18 months longer compared to filing under the
smoothen the circumstances surrounding the Paris Convention;
invention;
• International search - applicant won't have
to request a search for prior art in every target
country;
• Optional international examination - applicant
won't have undergo examination in every
target country;
 No. A PCT application can even claim
Paris Convention priority to an earlier-
Does filing under filed application.
the Paris Applicants can mix and match their direct
and PCT filings to take into account their
Convention overall commercial strategy. For example,
exclude filing an applicant could choose to file a PCT,
along with a simultaneous direct filing
under the PCT? into one or more commercially important
destinations
 This shouldn't be an “either-or”
question.
And finally... Applicants can mix and match their direct
and PCT filings to take into account their
PCT or Paris overall commercial strategy. For example,
an applicant could choose to file a PCT,
Convention? along with a simultaneous direct filing
into one or more commercially important
destinations.