The PCT: A Treaty that Revolutionized International Patents
The Patent Cooperation Treaty (PCT) makes international patenting worthwhile. Its advantages are many. The PCT enables businesses to apply for patent rights in any number of PCT member countries (there are now 148) by filing a single international application instead of having to file separate applications in every country. It entitles applicants to receive an international search of the prior art and a preliminary opinion on their invention‘s patentability, both prepared by a major patent office, as well as to have their applications published, which helps prevent competitors from seeking rights for the same invention. It also provides applicants with the right to amend their applications’ claims and/or description before entering the “national stage,” which is when applicants convert their international applications into national applications in the countries in which they really want patent protection. The PCT helps businesses delay patenting costs and gives them much needed time to make strategic patenting decisions. In an era when all businesses need to think globally, the PCT provides a streamlined system that makes the acquisition of international patent rights a reality.
The PCT is administered in Geneva, Switzerland, by the World Intellectual Property Organization (WIPO), an international organization in which the US Patent and Trademark Office (USPTO) plays a leading role. Since the PCT began operations in 1978, the system has been an unprecedented success. Businesses worldwide filed more than 164,000 international applications in 2010, with almost 45,000 of those applications (more than 27%) coming from US applicants. Applications from Japan, Germany, China, and Korea came next—a clear sign of the growing importance of patent protection in Asia. In total, applicants—from solo inventors to the world’s largest multinationals—have filed more than two million PCT applications, demonstrating business’ confidence in the system and in the important role that PCT plays in advancing innovation.
So how does the system work? The first step is to prepare and file an international application, which is most often based on a previously filed US application. As part of the application process, applicants select their International Searching Authority, that is, the patent office that will carry out the initial patent search of their invention and furnish a written opinion on whether the invention meets the requirements for patentability. US applicants currently get to choose among four leading patent offices: the USPTO, the European Patent Office, the Korean Intellectual Property Office, and IP Australia; and soon they will also be able to select Rospatent, the Russian Patent Office.
The international search process serves a very valuable purpose. It helps businesses evaluate their chances of obtaining patents in the PCT member countries, and it provides an opportunity to remedy flawed applications. A favorable international search report and written opinion tends to indicate a strong patent application with a good chance of speedy grant in the national stage. It may even give applicants the right to apply for expedited processing based on a new initiative called the PCT-Patent Prosecution Highway. But if applicants receive an unfavorable response from the International Searching Authority, all is not lost. They can use the PCT to amend their international applications to overcome the prior art references cited against them, or they can use the results to formulate effective arguments in the national stage.
Publication of the application by WIPO generally comes next. Publication also benefits PCT applicants in several ways. Once applications are published, the inventions they describe become part of the prior art, ensuring that no other patent applications containing equivalent claims, regardless of where they are filed, may be granted. Publication can also accord provisional protection to the published inventions, a factor that can become important in calculating damages for infringement if litigation later ensues.
Publication is likely to provide an additional benefit if a proposal currently pending before the PCT member countries is adopted: Businesses that desire to license their inventions will be able to include in their published PCT applications a notice of their willingness to do so. The opportunity to indicate availability for licensing will be open to all businesses, but small businesses and start-up ventures will probably find it particularly advantageous.
In the PCT timeline, the period following publication provides another opportunity to amend international applications or to overcome negative comments in the written opinion. But what most applicants do is wait—and the opportunity to wait may just be the most valuable aspect of the PCT system. Applicants generally have a period 18 months from the time they file their PCT applications to the time they have to enter the national stage and pursue patent rights in accordance with the national laws of their selected countries. During those 18 months, businesses are free to seek financing, explore marketing opportunities, evaluate the competition, and further develop their technologies without having to commit to a fixed patent-filing strategy. The information and data the businesses gather during those 18 months, the partnerships they form, the new insights they uncover, and the knowledge they acquire to formulate intelligent national stage filing decisions have often proved crucial in shaping the success of business ventures.
The greatest contribution of the PCT is that it has made international patenting accessible. Countless US businesses have been the beneficiaries.