Frequently Asked Questions

What is the PCT?

The Patent Cooperation Treaty (PCT) is a system for filing patent applications, not a system for granting patents.

The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO), signed at a diplomatic conference held in Washington, D.C. in June 1970 and intended as an alternative to the traditional patent system. It entered into force on the 24th of January 1978, initially with 18 contracting states, with applications starting on the 1st of June the same year.

In Chile, the treaty entered into force on the 2nd of June 2009. Today, over 150 states are party to the treaty.

The PCT is often considered the most significant milestone for international cooperation in invention patents since the adoption of the Paris Convention. It is essentially a treaty meant to streamline and organize international cooperation in the filing of patent applications and the search, examination, and disclosure of technical information in applications. The PCT does not grant “international patents”. The responsibility for granting patents lies exclusively with patent offices in the country where protection is sought, or the offices acting on behalf those countries (the Designated Offices). The PCT does not compete with the Paris Convention; rather, it complements it. It is a special agreement within the framework of the Paris Convention and only open to those states that already take part in said Convention.

How do I register a patent in other countries?

The following options are available:

a) Filing patent applications simultaneously in every country where the invention is to be protected.

b) Filing a patent application in a country party to the Paris Convention (one of the member states of the Paris Convention for the Protection of Industrial Property), and later filing other patent applications in other Paris Convention member countries within a 12-month period, counting from the date of the first application, while benefiting from priority based on the date of the first application.

c) Filing an application in accordance with the Patent Cooperation Treaty (PCT), a system for simplifying, relative to options a) and b), the processing of international patent applications.

Note that the PCT is not a system for granting patents.

How do I protect patents via the PCT?

The PCT is a patent application system, not a patent granting system, as it does not have the power to grant international patents. The responsibility for granting patents lies exclusively with national industrial property offices of the countries where protection is sought. The PCT is a method of filing applications alternative to the national system established in Law No. 19,039.

The main users of the PCT system are large companies, research institutions, and universities. Nevertheless, it is also used by small and medium-sized companies and even by individual inventors. The online publication PCT Newsletter publishes an annual list of the main PCT users.

Requirements

The Request (PCT Art. 4): The request should be filed via a printed form (form PCT/RO/101), which can be downloaded from the WIPO website and should contain the title of the invention and required information related to the applicant, the inventor, and the applicant’s agent, if any.

In Chile, the request, along with the rest of the application, can also be filed electronically through the WIPO ePCT system.

In Chile, the request can also be filed via printout through the PCT-EASY function of the PCT-SAFE program. In this case, it must be filed together with a CD containing an electronic copy of the data contained in the request and a copy of the abstract.

The description or specifications report (PCT Art. 5, Rule 5): The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

The Claims (PCT Art. 6, Rule 6): The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise and shall be fully supported by the description. The Drawings (PCT Art. 7, Rule 7): Drawings are only necessary when the invention can be drawn and these drawings are needed for it to be understood.

The Abstract (PCT Rule 8): The abstract consists of a summary of the invention contained in the description, the claims, and the drawings, preferably between 50 and 150 words in size. It should only serve to describe the technical information of the invention.

Where is it filed?

The applicant also has the option to file his or her international application at the International Bureau at the WIPO, which can act as Receiving Office, whatever state the applicant is a citizen or resident of. If there are several applicants, the international application can be filed at the International Bureau in its role as a Receiving Office, if at least one of the applicants is a citizen or resident of a member state (PCT Rule 19).

Timeframe

In the majority of cases, the applicant has a time period of 30 months, counting from the date of the initial patent application, from which he or she claims priority, to initiate proceedings related to the national phase in each patent office. This means that the applicant normally has an additional 18 months over those provided by the Paris Convention, before he or she has to satisfy the national requirements.

Cost

The transmittal fee is paid to the Receiving Office (RO). Its purpose is to compensate the Office for its work pertaining to the international application. The amount of the fee is set by the RO (PCT Rule 14).

The international filing fee is paid to the International Bureau at the WIPO. Its purpose is to cover expenditures for the International Bureau’s work pertaining to the PCT system. The amount is set by the fee table in the annex to the rules and is decided by the member states of the PCT (PCT Rule 15).

The international search fee is paid to the International Searching Authority. Its purpose is to compensate the Authority for the work pertaining to creating the international search report. The amount of the fee is set by the Authority (PCT Rule 16).

What does INAPI being an ISA/IPEA entail?

With the designation of INAPI as an ISA/IPEA within the framework of the General Assembly of the World Intellectual Property Organization (WIPO) on the 4th of October 2012, the Chilean office became the second authority in the region, after Brazil, and the second Spanish-speaking country in the world, after Spain, to author international patentability reports.

Designating INAPI as an ISA/IPEA is not only a strong recognition of the work done over the last few years, but it also represents a unique possibility to further improve the development of INAPI in relation to the PCT and help make Chile a regional innovation hub.

The status of INAPI as an international PCT authority favors many international applicants in the region who, based on the reputation of INAPI and the use of Spanish, can choose INAPI as ISA/IPEA for the examination of their applications. It is also a great benefit for national applicants filing international PCT applications, who, as well as having INAPI as a receiving office, have access to an ISA/IPEA in our country with affordable fees and with which they can maintain direct and fluent communication without incurring additional fees. This aids immensely in processing their applications within the PCT system.

Finally, the fact that INAPI is an ISA/IPEA has led the Chilean office to adopt the highest standards of quality and management, both in its administrative work as well as in its work relating to the examination of patent applications and utility models. This improvement is seen both when making searches as well as when issuing patentability reports, lending these processes greater efficiency, quality, and speed.

Functions of an ISA/IPEA office

An International Searching Authority (ISA) is responsible for identifying published documents that could influence the patentability of an invention and for issuing a preliminary, non-binding written opinion (WO) about whether an invention fulfills patentability criteria, taking into account the results of the search report.

An International Preliminary Examination Authority (IPEA) is responsible for making a second, optional examination, with an aim to formulate a preliminary, non-binding opinion on whether the application fulfills patentability requirements.

Requirements to be named as an ISA/IPEA office

The national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches and/or examinations.

That Office or organization must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes and/or examinations, on paper, in microform, or stored on electronic media.

That Office or organization must have a staff that is capable of searching the required technical fields and that has the language skills to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or to which it is translated.

That Office or organization must also have in place a quality management system and internal review arrangements in accordance with the common rules of international search.