Patent Cooperation Treaty
What is the Patent Cooperation Treaty (PCT)?
The Patent Cooperation Treaty (PCT) is an international treaty governed by the World Intellectual Property Organisation (WIPO). As of 1st June 2020, 153 countries are in agreement of the PCT, including Malaysia. Malaysia became the 131st state to be a member of the Patent Cooperation Treaty (PCT) as the country’s accession to the PCT on the 16th of May 2006 and the Treaty came into force on the 16th August 2006.
The PCT system allows the applicant to file for a patent in as many as the 153 member countries through a single international application filed in a single designated country. Filing an application under the PCT is equivalent to filing national applications in each of the member countries, meaning the applicant will be able to pursue patent protection in the each designated country.
The PCT is most advantageous for applicants seeking to protect their inventions in a wide range of countries.
Who Can File a Patent Cooperation Treaty Application?
An applicant wishing to make a PCT application for his or her invention must be a resident or national of a PCT member country. Only one applicant is required to comply with this requirement if there are multiple applicants named in the international application. Legal entities, such as corporations, research institutions, companies and enterprises, are also eligible to make an application under the PCT if the legal entity is constituted under the national law of the PCT member country in question.
Member Countries in Agreement of Patent Cooperation Treaty
Source: via WIPO (https://www.wipo.int/pct/en/pct_contracting_states.html)
Patent Cooperation Treaty Application Process
There are two phases in the PCT system: the international phase and the national phase. The international application made by the applicant firstly goes through the international phase. The international phase is regulated by the PCT’s customary rules and regulations. Upon the completion of the international phase, the applicant goes through the national phase. The national phase is regulated by national or regional law. Under national or regional rules and regulations will the applicant be granted patent protection in the designated countries.
International Phase
Filing: The applicant files an international application with a national or regional patent office or WIPO in one language, paying one set of fees and complying with PCT formality requirements.
International Search & Publication of Documentation: The ISA are entrusted with assembling the International Search Report and primary Written Opinion of PCT applications. Firstly, the ISA determines if published patent documents and technical literature have an influence on the patentability of the applicant’s invention. Following this, a written opinion on the patentability of the applicant’s invention is summarised. After 18 months from the earliest priority date, contents of the international application are disclosed alongside the international search report.
Supplementary International Search (optional): At the applicant’s request, a second ISA can determine if there are published documents and technical literature that have not been identified by the first ISA during the first search.
International Preliminary Examination (optional): At the applicant’s request, an additional patentability analysis can be implemented on the amended application (in accordance with the content of the written opinion).
National Phase
Post-PCT procedures, the applicant is free to seek patent protection from national or regional offices of designated countries, typically at 30 months from the earliest filing date of the applicant’s initial application from which he or she claims priority. In the national phase, national or regional laws, rules and regulations apply as to determine patentability of the invention.