PCT

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 parties., Applications starting to be filed 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 on 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 those applications. The PCT does not grant “international patents”. The responsibility for granting patents lies exclusively with patent offices in the relevant country where protection is sought, or the offices acting on behalf of 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 opens to those states that already are party to the said Convention.

How do I obtain 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 benefitting from the right of 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 , options a) and b) above, regarding the processing of international patent applications. Note that the PCT is not a system for granting patents, but for filing them.

How to protect patents through the PCT?

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO). Its main objective is to simplify and make more effective and economical (from the point of view of users of the patent system and administrative offices) the procedure for applying for patent protection for an invention in several countries.

What does it entail?

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.

At whom is it aimed?

The PCT is aimed at those who seek to secure protection for their invention in several countries. 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.

Requirements

• The Request (PCT Art. 4): The request should be made in a printed form (form PCT/RO/101), which can be downloaded at the following link: http://www.inapi.cl/portal/institucional/600/articles-974_form_url.pdf 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 made electronically through the WIPO’s ePCT system.
• The description or specifications (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 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.
• 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.

Where is it filed?

The applicant may file the international PCT application directly through INAPI as a Receiving Office, either in electronic form through the ePCT system, or in person. Likewise, the applicant has the option to file the international application at the International Bureau at WIPO, which can also 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 PCT member state (PCT Rule 19).

Timeframe

In the majority of cases, the applicant has a time period of 30 months, counting from the filing date of the patent application, from which the priority is claimed, 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 satisfies the national requirements.

Cost

Transmittal fee: 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).

International filing fee: Paid to the International Bureau of 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 PCT Rules and is decided by PCT member states (PCT Rule 15).

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

Results

Detailed diagram of the PCT processing flow (PDF)

Main characteristics: The PCT establishes an international system allowing for a single patent application, filed at a single patent office (Receiving Office) and written in a single language, to function as a regular national application in each designated state, starting from the date of the international filing.

It aids in the process of filing an international patent application, since it has a predefined set of requirements.

he formal examination of the international application is carried out by a single patent office: the Receiving Office.

Based on the international search report and the written opinion regarding the novelty, level of inventiveness, and the industrial applicability of the invention, the applicant may evaluate, in a non-binding manner, the likelihood of obtaining patent protection.

It establishes the centralized international publication of PCT applications, generally 18 months after the priority date of the international application. This is carried out by the International Bureau.

Optionally, once the international search report is received, the applicant may request a non-binding preliminary international examination with a written opinion. This examination gives the applicant the possibility to modify the patent application before entering the national phase.

The PCT encourages users to seek protection for their inventions at an international level, promoting the scientific, technological, and economic development of the country.

INAPI as an ISA/IPEA Administration

INAPI was designated as an ISA/IPEA Administration by the World Intellectual Property Organization (WIPO) on the 4th of October 2012 and began operating as such on the 22nd of October 2014, placing the Chilean office among the 22 most important offices carrying out this work today.

The Patent Cooperation Treaty (PCT) is an international treaty administered by WIPO. It entered into force in 1978, with Chile becoming a member on the 2nd of June 2009.

The PCT is a system for filing patent applications, not a system for granting patents. It is considered the most important milestone for international cooperation in the field of 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 patent applications.

The PCT does not grant “international patents”. The responsibility for granting patents lies exclusively with patent offices in the relevant 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 opens to those states that already are part to the said Convention.

Under the umbrella of INAPI’s internationalization policy, the PCT provides the certain and concrete possibility of actively participating in the international patent system, specifically as a PCT ISA/IPEA authority (International Searching Authority / International Preliminary Examination Authority).

Today, only 22 industrial property offices worldwide are ISA/IPEA Administrations: Australia, Austria, Brazil, Canada, Chile, China, Egypt, the European Patent Office (EPO), Finland, India, Israel, Japan, the Nordic Patent Institute, Russia, Singapore, South Korea, Spain, Sweden, Turkey, the Visengrad Patent Institute, United States of America, and Ukraine.

What does INAPI being an ISA/IPEA entail?

With the designation of INAPI as an ISA/IPEA Administration, the Chilean office became the second authority in the region, after Brazil, and the second Spanish-speaking country in the world, after Spain, to issue international patentability reports.

Designating INAPI as an ISA/IPEA does not only means a strong recognition to the work done by INAPI over the last few years, but represents also a unique possibility to further improve INAPI´s development in relation to the PCT and help making Chile a regional innovation hub.

The designation of INAPI as an international PCT authority benefits many foreign applicants who, based on INAPI’s reputation and on the use of the Spanish language, can choose INAPI as an ISA/IPEA Administration for the examination of their patent applications. It also greatly benefits Chilean nationals filing PCT international applications. Having INAPI as a receiving office, national patent applicants 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 through the PCT system.

Finally, the fact that INAPI is an ISA/IPEA Administration has led the Chilean office to adopt the highest standards of quality and management, both in its administrative work as well as in 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 Administration

An International Searching Authority (ISA) is responsible for identifying published documents that could affect 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 designated as an ISA/IPEA Administration

For a patent office to become an ISA/IPEA, as in INAPI’s case, the office must at the time of designation fulfill the following minimum requirements, in accordance with PCT Rule 36:

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 which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated.

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

Advances and milestones in the implementation of INAPI as ISA/IPEA

Since the designation of INAPI as a PCT ISA/IPEA Adminitration in October 2012, the office has made sustained progress in its implementation process to start operating as an ISA/IPEA in October 2014, with the following improvements:

Contracting access to databases such as STN, EPOQUE Net, Proquest Dialog, IEEE, Thomson Innovation, Nature Magazine, Science Direct (Elsevier), Springer Link, Wiley (Interscience), Oxford University Press, ACS Web Edition, and Annual Reviews. It should be noted that an agreement was reached with the Chilean National Commission on Scientific and Technological Research (CONICYT) to start utilizing the Scientific Information Electronic Library (BEIC), which is the country’s most important tool for accessing scientific information. This program allows access free of charge through the Internet to the complete text of over five thousand scientific and technological electronic journals in over a hundred disciplines. The cost of this program for the Chilean state exceeds 8 million US dollars.

The design of a quality management system for the processing of the application and examination of patents filed within the International Phase of the PCT.

The design and implementation of the PCT Administrative Management System (AMS or SGA from its Spanish initials), an internal IT system allowing the processing, management, and tracking of patent applications filed through INAPI in the International Phase of the PCT.

The implementation of the online ePCT system, an online service created by the WIPO specifically for Receiving Offices and ISA/IPEA authorities to have electronic access to the latest documents and bibliographic data in the International Bureau databases. This data is used both for international applications where the corresponding office acts as Receiving Office or ISA/IPEA, as well as for the electronic transmittal of documentation relating to international PCT applications.

The publishing of Patent Guidelines, referring to INAPI criteria on the analysis of technical, legal, and procedural processes in the filing of patent applications.

The creation of a new PCT Department within the Patent Sub-directorate.

The increased staffing of professionals with expertise in the search and examination in different technological fields.

The improvement of English language skills of professionals in the patent examination area, with an end to achieve proficiency in all examiners.

Team training at the Patent offices of Israel, the United States, Canada, Japan, Australia, among others.

The development and institutional certification of PCT processes and workflows.

The certification of the process of INAPI as Receiving Office under the ISO 9001:2008 standard.