Patent Cooperation Treaty
Overview
The Patent Cooperation Treaty (PCT) can simplify the process of obtaining patents in many countries. A PCT application is filed with the PCT authorities, who make preliminary assessment of the invention’s patentability. This helps determine if the cost and effort of pursuing patent protection for the invention in specific countries is justifiable.
The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva. The Canadian Intellectual Property Office (CIPO) acts as a “Receiving Office” at which nationals or residents of Canada may file PCT applications seeking patent protection in:
| Albania Algeria Angola Antigua/Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia/Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d’Ivoire Croatia Cuba Cyprus Czech Republic Denmark |
Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France Gabon Gambia, The Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakstan Kenya Korea, South Korea, North Kyrgyzstan Laos Latvia |
Lesotho Liberia Libya Liechtenstein Lithuania Luxembourg Macedonia Madagascar Malawi Malaysia Mali Malta Mauritania Mexico Moldova Monaco Mongolia Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Papua New Guinea Peru Philippines Poland Portugal Romania Russian Federation Saint Kitts and Nevis |
Saint Lucia San Marino São Tomé and Principe Senegal Serbia/Montenegro Seychelles, The Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka St.Vincent/Grenadines Sudan Swaziland Sweden Switzerland Syrian Arab Republic Tajikistan Tanzania Thailand Togo Trinidad & Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United States Uzbekistan Vietnam Zambia Zimbabwe |
See forms and filing information for further details.
CIPO Inspection, Report and Opinion
The CIPO inspects the application to verify that it meets basic PCT formal requirements, then transmits the application to the WIPO, which conducts a further formalities check. If the application meets the formal requirements, the CIPO processes the application as discussed below.
A PCT application may be an originating application—if no previous application to patent the invention has been filed. Alternatively, a PCT application may be filed within one year of the filing of an earlier originating application—in which case the PCT application may claim priority retroactively to the filing date of the earlier application.
Substantive processing of a PCT application begins with a CIPO search report and patentability opinion. The search report lists prior art references the CIPO considers relevant. The opinion indicates whether the CIPO considers the invention to be novel and inventive in comparison to the prior art, and whether the invention has sufficient degree of industrial applicability.
If the search report and opinion are favourable, then the applicant may elect to proceed. If the search report and opinion are highly unfavourable and there is no realistic prospect of overcoming the unfavourable opinion, the applicant may decide to abandon the application.
Cost Savings and Efficiencies
Significant cost savings may be realized via the PCT. Although there are exceptions, it would otherwise be necessary to file patent applications in each country of interest within one year of the date of filing an original non-PCT application. Such foreign filing programs can be cumbersome and expensive. Typically, a host of different procedures must be implemented on an urgent basis, and filing fees, translation costs and other charges incurred.
Moreover, most patent offices do not assess a patent application’s novelty and inventiveness until the application has been on file for well over one year. Accordingly, to meet the one-year deadline, one must often decide whether or not to file foreign patent applications solely on the basis of a search conducted before the originally filed patent application was prepared. The invention covered by that application may differ significantly from the subject matter covered by the search. A PCT search report and patentability opinion, in contrast, can be cost-effective tools for assessing the viability of a foreign patenting program.
WIPO Report and Opinion, National Phase Entry
Eighteen months after the originating application is filed, WIPO publishes the PCT application and the search report (the patentability opinion is not published at this stage). The applicant may choose to enter the national phase (e.g. submit the patent application to the patent office of each country of interest) either twenty or thirty months after the originating application’s filing date. The national phase is entered at twenty months if the applicant does not wish to have the CIPO conduct a further examination of the application.
The chosen national phase patent offices receive the search report and patentability opinion from WIPO. Informal comments on an unfavourable opinion can be submitted to the CIPO for forwarding to the chosen patent offices with the opinion, in an effort to soften the impact of the unfavourable opinion. Each patent office decides whether and to what extent to take the comments into account.
Further CIPO Examination
If the applicant opts for further examination by the CIPO—for example, in an effort to overcome an unfavourable opinion—then an examination fee (currently about C$1,600) is paid. The further examination phase, if pursued, lasts seven to 16 months, during which the CIPO may issue further opinions. The applicant may reply by amending the application and submitting arguments in an attempt to obtain claims free of conflict with the prior art. The phase concludes with the CIPO’s “international preliminary report on patentability” which is made available to the chosen national patent offices, if the application enters the national phase.
National Phase
When the national phase is entered in the chosen countries, the applicant pursues separate patent applications pursuant to the laws of each chosen country. The PCT simplifies the process by enabling the applicant to pursue a single English-language PCT application for up to thirty months before incurring the cost of filing and processing multiple foreign applications.
A PCT application may also enter the European regional phase as a European patent application capable of yielding patent protection in Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, San Marino, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. European patent protection can also be extended to Bosnia & Herzegovina, Montenegro and Serbia.
Direct entry into the national phase is not available for Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands or Slovenia—those countries may be covered only by sub-designating them in a European patent application.
A PCT application may also:
- enter the Eurasian regional phase as a Eurasian patent application capable of yielding patent protection in Armenia, Azerbaijan, Belarus, Kazakstan, Kyrgyzstan, Moldova, the Russian Federation, Tajikistan and Turkmenistan;
- enter the African Intellectual Property Organization (OAPI) regional phase as an OAPI patent application capable of yielding patent protection in Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal & Togo. Direct entry into the national phase is not available for the OAPI countries—they may be covered only by sub-designating them in an OAPI patent application; and,
- enter the African Regional Intellectual Property Organization (ARIPO) regional phase as an ARIPO patent application capable of yielding patent protection in Botswana, the Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia & Zimbabwe.
For more information contact mail@patentable.com (Oyen Wiggs Green & Mutala LLP)