PATENT COOPERATION TREATY (PCT)

The Patent Cooperation Treaty, or PCT, tends to standardize the procedure for filing a patent application and makes it possible to perform one single filing (international application) covering a certain number of States. In practice, it is a “delaying” procedure, because it allows to delay, by a defined time and for longer than the twelve months laid down by the Paris Convention, the moment when it is necessary to decide where in actual fact to make the patent title valid.

This Treaty enables any person or juridical body in the States belonging to the Convention to file an international patent application.
On 1st january 2010 the Contracting States are:
in Africa:
Algeria, Angola, Benin, Botswana, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Egypt, Equatorial Guinea, Gabon, Gambia, Ghana, Guinea, Guinea-Bissau, Ivory Coast, Kenya, Lesotho, Liberia, Libyan Arab Jamahiriya, Madagascar, Malawi, Mali, Mauritania, Morocco, Mozambique, Namibia, Niger, Nigeria, Sao Tome and Principe, Senegal, Seychelles, Sierra Leone, South Africa, Sudan, Swaziland, Tanzania, Togo, Tunisia, Uganda, Zambia, Zimbabwe;
in the Americas:
Antigua and Barbuda, Barbados, Belize, Brazil, Canada, Chile, Colombia, Costa Rica, Cuba, Dominica, Ecuador, El Salvador, Grenada, Guatemala, Honduras, Mexico, Nicaragua, Perù, Saint Kitts and Nevis, Saint Vincent and Grenadines, Saint Lucia, Trinidad and Tobago, United States of America;
in Asia and the Pacific:
Australia, Azerbaijan, Bahrain, China, Democratic People’s Republic of Korea, Democratic Republic of Laos, Dominican Republic, India, Indonesia, Israel, Japan, Kazakhstan, Kyrgyzstan, Malaysia, Mongolia, New Zealand, Oman, Papua New Guinea, Philippines, Republic of Korea, Singapore, Sri-Lanka, Syria, Tajikistan, Thailand, Turkmenistan, United Arab Emirates (UAE), Uzbekistan, Viet-Nam;
in Europe:
Albania, Armenia, Austria, Belgium, Belarus, Bosnia-Herzegovina, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Moldova, Monaco, Montenegro, Netherlands, Norway, Poland, Portugal, Republic of Macedonia, Romania, Russian Federation, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, Ukraine, United Kingdom.

It is possible to combine the PCT system with the European Patent system as the two are compatible.

It is also possible to designate “regional patents”, that is, valid in a group of States.
At present the Regional Organizations are:

• EPO (European Patent Organization);
• ARIPO (African Regional Industrial Property Organization);
• OAPI (African Intellectual Property Organization);
• EAPO (Eurasian Patent Organization).

Steps

The process for obtaining a patent title by PCT procedure is divided into two steps.
The first step, or international step, consists in:

• filing an international application at the Receiving Office;
• issuing an International Search Report by an appropriately appointed body (International Preliminary Report on Patentability - IPRP), accompanied by a statement on the patentability of the invention, in terms of novelty, inventive activity and industrial applicability. This search is not binding for the application to proceed.
• publication of the application together with the Search Report by the appropriate organization. However, the non-binding statement will not be published.
  At this stage of the procedure, according to the PCT Convention it is possible to start the national phases:
  • within a maximum of 20 months from the priority date (or from the filing date in the event that no priority was claimed), for those States which have not yet adapted their national laws to the latest modifications made to the PCT Convention and for as long as such incompatibility subsists.
  • within a maximum of 30 months from the priority date (or from the filing date in the event that no priority was claimed), for all the other States or Regional Organizations.

If it should be desired to extend to 30 months the deadline for starting the national phase in those States which have not yet adapted to the latest modifications made to the PCT procedure, it is necessary to proceed, within 19 months of the priority date (or the filing date if no priority was claimed), to request that an International Report be issued, as explained hereafter.

It is also possible (whether it is appropriate has to be decided case by case), within the maximum deadline (that is, of the two deadlines, the one which expires later) of three months from the issuing of the international search report or 22 months from the priority date (or the filing date if no priority was claimed), to request that an International Preliminary Examination Report (IPER) be issued. This Report gives a non-binding indication as to whether the invention meets the requirements of: novelty, inventive activity and industrial applicability.
If the IPER is requested, the previous statement, non-binding and issued with the international search report, may be challenged and, following an exchange of opinions with the Examiner, it is also possible to modify the text to clarify the inventive features of the invention; in this way, a different Report may be issued, possibly more favorable to the Applicant who has had the opportunity to explain his position better.

At the end of the international step, the second step begins.
In this step the applicant must pay the prescribed fees and provide the translations required by the individual Contracting States (or Regional Organizations) as chosen and designated.
The patent must then possibly undergo an examination of merit in the individual States (or Regional Organizations) where this is required.
Finally, in the individual States (or Regional Organizations) designated, the patent certificate may be granted or refused.