Patent Cooperation Treaty

Patent Cooperation Treaty

On 16th May 2006,

Malaysia acceded to the 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?

Patent Cooperation Treaty Patent International Application Malaysia

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

United Arab Emirates

Antigua and Barbuda

Albania

Amernia

Angola

Austria

Australia

Azerbaijan

Bosnia & Herzegovina

Barbados

Belgium

Burkina Faso

Bulgaria

Bahrain

Benin

Brunei Darussalam

Brazil

Botswana

Belarus

Belize

Canada

Central African Republic

Congo

Switzerland

Cote d’Ivoire

Chile

Cameroon

China

Colombia

Costa Rica

Cuba

Cyprus

Czechia

Germany

Djibouti

Denmark

Dominica

Dominican Republic

Algeria

Ecuador

Estonia

Egypt

Spain

Finland

France

Gabon

United Kingdom

Grenada

Georgia

Ghana

Gambia

Guinea

Equatorial Guinea

Greece

Guatemala

Guinea-Bissau

Honduras

Croatia

Hungary

Indonesia

Ireland

Israel

India

Iran (Islamic Republic of)

Iceland

Italy

Jordan

Japan

Kenya

Kyrgyzstan

Cambodia

Comoros

Saint Kitts and Nevis

Democratic People’s Republic of Korea

Republic of Korea

Kuwait

Kazakhstan

Lao People’s Democratic Republic

Saint Lucia

Liechtenstein

Sri Lanka

Liberia

Lesotho

Lithuania

Luxembourg

Latvia

Libya

Morocco

Monaco

Republic of Moldova

Montenegro

Madagascar

North Macedonia

Mali

Mongolia

Mauritania

Malta

Malawi

Mexico

Malaysia

Mozambique

Namibia

Niger

Nigeria

Nicaragua

Norway

New Zealand

Oman

Panama

Peru

Papua New Guinea

Philippines

Poland

Qatar

Romania

Serbia

Russian Federation

Rwanda

Saudi Arabia

Seychelles

Sudan

Sweden

Singapore

Slovenia

Slovakia

Sierra Leone

San Marino

Senegal

Sao Tome and Principe

El Salvador

Syrian Arab Republic

Eswatini

Chad

Togo

Thailand

Tajikistan

Turkmenistan

Tunisia

Turkey

Trinidad and Tobago

United Republic of Tanzania

Ukraine

Uganda

United States of America

Uzbekistan

Saint Vincent and the Grenadines

Vietnam

Samoa

South Africa

Zambia

Zimbabwe

Source: via WIPO (https://www.wipo.int/pct/en/pct_contracting_states.html)

Patent Cooperation Treaty Application Process

Patent Cooperation Treaty Patent International Application Malaysia

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.

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