International Patent Filings
In our previous article, we discussed forms of international patent filing and went into more detail on the Paris Convention, which essentially gives an applicant a 12-month window after the initial application to file their patent in other member states. The propriety date for each of the subsequent applications will be the priority date of the initial application, thereby allowing applicants to not anticipate their own work in different jurisdictions.
While advantageous, the Paris Convention still requires individual filings and prosecutions in each country, and may be cumbersome to entities who are trying to patent their technology more than say, 10 countries. There is an additional regime available to people in this case, and that is the PCT regime.
Patent Cooperation Treaty
The Patent Cooperation Treaty is a specialized agreement that falls under the purview of the Paris Convention. Before becoming a PCT member, a state must first join the Paris Convention.
The PCT attempts to simplify and improve the process of obtaining patents. It was modified in 1984 after being altered in 1979. Through an international patent application, the PCT allows one to secure patent protection for innovation in many nations at the same time.
Any individual who is a national or resident of a Contracting State may apply with the national patent office or the World Intellectual Property Organization’s International Bureau in Geneva.
The PCT specifies the particular requirements to which any foreign application must conform. Applications must join the national procedure in any country or region of interest for 30 months (31 months in some countries) following the priority date of the PCT application (or earlier if applicable).
Advantages of the Patent Cooperation Treaty
- Inventors can concurrently get protection in 117 PCT signatory countries by filing a single international phase patent application.
- The formality criteria, international search, and preliminary review reports, as well as the PCT system’s centralized worldwide publishing, are all standardized.
- The PCT helps to the promotion of scientific research.
- It provides the best legal protection for innovations.
- It simplifies and reduces the cost of invention.
- It raises the country’s standing in the field of intellectual property throughout the world.
- The PCT allows for effective patent portfolio management.
- Evaluate and provide incentives to protect an innovation before it incurs significant expenses in foreign nations.
Drawbacks of the Patent Cooperation Treaty
- Expensive filing costs.
- PCT is tough since its Member States’ formal standards are more complicated than the ones for national applications.
- PCT time constraints might be costly as well.
- Obtaining patents under PCT requires a longer time.
Every process of patent application has both advantages and disadvantages. As a result, one must analyse the applicant’s interests and circumstances. Despite the benefits of the PCT, the initial fees are somewhat substantial. Applicants with a limited budget and an interest in only a few countries may decide to make direct applications to the Paris Convention rather than a PCT application. Three or more requests to the Paris Convention can be made for the price of one PCT filing, especially if no translations are required.
Author: Usha Saha, Legal Intern at PA Legal.
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