I. Patent Cooperation Treaty—A brief background:

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What are the purposes and objectives of the Patent Cooperation Treaty? What is the role of WIPO in the PCT? Explain the procedure that an applicant would go through using the Patent Cooperation Treaty.

I. Patent Cooperation Treaty 4A brief background: With the advent of science, technology and increasing intercourse between states, the various nations of the world realised that the patent application scheme as envisaged under the Paris Convention, 1883 suffered from the twin evils of substantially increasing the cost of patent applications and imposing considerable stress on Patent Offices. It was thought necessary to introduce an international legal measure under which a centralised agency would be able to ascertain whether an invention at the outset was patentable (i.e.

whether it satisfied the three criteria of novelty, non-obviousness and industrial application); and if so, in which countries of the world it could be patented. It is out of this need that the Patent Cooperation Treaty, 1970 evolved. The Patent Cooperation Treaty, 1970 was the monumental outcome of the Washington Diplomatic Conference held in May, 1970 between 18 Contracting States to ease tedious patent filing procedures globally.

The Treaty entered into force on January 21, 1978 and the first international applications were filed ... more. less.

on June 1, 1978. The Treaty (commonly referred to as cPCT d) is administered by the World Intellectual Property Organization (WIPO) and at present has 135 Contracting Parties. The PCT introduced a new era of cooperation for the facilitation and promotion of patents worldwide. Several commentators observe that the progressive measures undertaken in the Paris Convention, 1883 are seconded only by the PCT. The PCT establishes an international system of filing of patents. II. Purposes and Objectives of the PCT: The Treaty has two principal aims, one in the field of procedures for obtaining legal protection for inventions, the other in the field of the dissemination of technical information and the organization of technical assistance , particularly for developing countries. In the field of procedures , the Treaty has two principal aims. One is to save effort 3 time, work, money 3 both for the applicant and the national Offices in cases where patents are sought for the same invention in a number of countries. The other is to increase the likelihood of granting deserving patents, particularly in countries not having all the facilities necessary for a thorough search and examination. The informational aim, in the language of the Preamble to the Treaty, is cto facilitate and accelerate access by the public to the technical information contained in documents describing new inventions. d Access to such information is facilitated not only by the publication of the international application but also by the fact that such publication is accompanied by the publication of an abstract and of the international search report. That report allows scientists and industrialists interested in the field, including the applicant 9s competitors, to understand the invention more easily and assess its technical and economic significance. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single cinternational d patent application instead of filing several separate national or regional patent applications. If there appears to be no prospect of obtaining a patent in any country, the international application can be abandoned and the applicant loses only the cost of filing a PCT application instead of the much greater cost of filing applications in every country of interest. In addition, the applicant gets 18 months more than if ordinary convention applications were filed to test the market and/or the product to determine whether or not to proceed with patent applications and in which countries. The overall objective of the PCT system is thus not only to significantly cut filing costs of patent applicants, but also to ensure that domestic patent offices, that may be incapable of conducting detailed 8 prior - art 9 searches are informed about the current developments, thus ensuring that only truly 8 inventive 9 inventions are granted patents. As the overall purport of conferment of intellectual property is ultimately the growth of science and technology leading to economic and social development, the PCT subserves this need by facilitating patent filing measures. This is more evident from the fact that till date more than a million applications have been filed under the PCT system. III. Role of WIPO in the PCT: The World Intellectual property Organisation (WIPO) is the nodal agency under the PCT. The WIPO provides a framework for overall coordination of the PCT system. According to official WIPO publications, the WIPO: " provides assistance to existing, new and potential Contracting States and their Offices; " provides advice on implementing the PCT in the national legislation and on setting up internal procedures in the Contracting States 9 patent Offices; " publishes the PCT Applicant 9s Guide and the PCT Newsletter ; " creates and disseminates PCT information via the PCT web site, paper " publications and through telephone and e-mail assistance; " organizes and gives PCT seminars and training courses. Further, for each PCT application filed, WIPO is responsible for: " receiving and storing all application documents; " performing a formalities examination; " publishing the application; " publishing the PCT Gazette (data about the application); " translating various portions of the PCT application and certain associated documents into English and/or French, where necessary; " communicating documents to Offices and third parties; and " providing legal advice on request to Offices and users. Thus the WIPO plays a focal role in the PCT system. It is the main facilitating agency for all international applications and is also concerned with educating contracting Parties about the PCT process. IV. Patent filing procedure under the PCT: PCT applications may be filed either in a local approved Receiving Office or directly at the International Bureau in Geneva which is administered by the World Intellectual Property Organisation. On filing a PCT application, applicants must designate the countries in which they wish to retain the option to file a patent application. There is a fee per country designated up to the first 5 countries and after that any number of further countries may be designated without fee. Most applicants therefore designate all countries. It is also possible to designate multi-country regional patent systems such as the European Patent Convention. 1. 8International Phase 9 and 8National Phase 9: PCT applications have two phases, an 8international phase 9 when they are international applications in the International Bureau, and a 8national phase 9 when they are converted to local patent applications in all the countries of interest. During the international phase, the designated International Searching Authority (a Patent Office which has been authorised by WIPO to conduct international patent searches) conducts a patent search for any relevant existing technology and an International Search Report is provided within around six months of filing to assist the applicant in deciding whether or not to proceed with patent protection. The patent specification is also published by the International Bureau. 2. Chapters I and II of the Treaty: The PCT Treaty is divided into two Chapters, Chapter I and Chapter II. Chapter I requires that within 20 or 30 months of the earliest priority date, (depending on whether or not the country concerned has adopted the most recent amendments to the PCT Treaty), the applicant must 8enter the national phase 9 that is, file patent applications in any one or more of the countries initially designated. Chapter II allows 30 months from the earliest priority date for entering the national phase and also requires a designated International Preliminary Examining Authority (a Patent Office which has been authorised by WIPO to conduct international examinations) to conduct a non-binding substantive examination of the patent specification to determine whether or not it meets the usual requirements for patentability now generally similar in most countries. An examiner issues a written opinion on patentability and the applicant may respond with reasoned arguments and/or amendments to the specification, but is not obliged to do so. The examiner considers the applicant's response and establishes an International Preliminary Examination Report, which is forwarded to the patent offices of each of the designated countries. 3. Entry into the 8National Phase 9: The national phase applications are filed in each country of choice just as a usual application would be filed. As there is extra paper work, PCT national phase applications often cost a little more than a normal direct filing. However, the fact that difficulties with the specification can often be sorted out before the national phase applications are filed, can mean substantially reduced prosecution costs. Local Patent Office examiners often agree with the opinions of the international examiners and therefore may not need to raise additional objections unless the international examiner's objections have not been adequately dealt with by the applicant. V. PCT filing in India: 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 21 months if India is designated or 31 months if India is designated as well as elected; from the priority date. The procedures established in the Patents Act 1970 are to be followed for PCT Applications as well. Thus, provisions concerning pre-grant and post-grant opposition, examination of patent application etc. shall remain the same irrespective of the fact that the patent Application has been preferred under the PCT. Every PCT Application designating India is examined by the Patent Office for the following: (i)Novelty; (ii)Obviousness; (iii)Utility; (iv)Patentability under the Patents Act, 1970 as amended, and (v)Anticipation. As in the case of ordinary patents granted under the Patent Act, 1970, once a patent is granted, it is valid for 20 years from its date of filing and it must be renewed every year by paying prescribed fee. Thus the PCT has to a large extent crystallised the goals set up under the Paris Convention, 1883. It has considerably aided the protection afforded to multinational corporations in their endeavour to secure patents in a number of countries. RAHUL DONDE

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