Patent Cooperation Treaty ("PCT")
The PCT was concluded in 1970, amended in 1979, and modified in 1984 and 2001. It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.
The Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva.
If the applicant is a national or resident of a Contracting State which is party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the revised Bangui Agreement Relating to the Creation of an African Intellectual Property Organization or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.
The international application is then subjected to what is called an "international search." That search is carried out by one of the major patent offices appointed by the PCT Assembly as an International Searching Authority (ISA). The said search results in an "international search report," that is, a listing of the citations of such published documents that might affect the patentability of the invention claimed in the international application. At the same time, the ISA prepares a written opinion on patentability.
The international search report and the written opinion are communicated by the ISA to the applicant who may decide to withdraw his application, in particular where the said report or opinion makes the granting of patents unlikely.
If the international application is not withdrawn, it is, together with the international search report, published by the International Bureau. The written opinion is not published.
The procedure under the PCT has great advantages for the applicant, the patent offices and the general public:
(i) the applicant has up to 18 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees; he is assured that, if his international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any designated Office during the national phase of the processing of the application; on the basis of the international search report or the written opinion, he can evaluate with reasonable probability the chances of his invention being patented; and the applicant has the possibility during the international preliminary examination to amend the international application to put it in order before processing by the designated Offices;
(ii) the search and examination work of patent offices can be considerably reduced or virtually eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary examination report that accompany the international application;
(iii) since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the patentability of the claimed invention.
The PCT created a Union. The Union has an Assembly. Every State party to the PCT is a member of the Assembly. Among the most important tasks of the Assembly are the amendment of the Regulations issued under the Treaty, the adoption of the biennial program and budget of the Union and the fixing of certain fees connected with the use of the PCT system.
Details concerning the PCT can be most simply obtained by consulting the Protecting your Inventions Abroad: Frequently Asked Questions about the Patent Cooperation Treaty, PCT Applicant's Guide and the PCT Newsletter, published by WIPO.
- Brings the world within reach
- Postpones the major coast associated with internationalizing a patent application
- Provides a strong basis for patenting decisions
- Is used by the world's major corporations, universities and research institutions when they seek international patent protection
- Allows you to apply securely and easily online, and to save money by doing so : (Click here) Source: WIPO
There are two ways in which an invention can be protected abroad. It can either apply directly to those countries of interest, or use the Patent Cooperation Treaty (PCT international application).
The PCT is an agreement between countries that they will co-operate in order to ease the process of applying for patents in a number of countries around the world. The system is administered by the World Intellectual Property Organization (WIPO) from its headquarters in Geneva, Switzerland.
The PCT system enables the applicant to make a single application in Malaysia (the international application) and then ‘designate' as many other countries that are involved in the PCT. The PCT system is a patent ‘filing' system, not a patent ‘granting' system. There is no PCT patent or international patent.
PCT International Application
The Intellectual Property Corporation of Malaysia (MyIPO) acts as a Receiving Office. The PCT application should contain the following :
All international applications file with MyIPO must be in the English language; as either a paper based application (in 3 copies) ; or an electronic application (using WIPO's ePCT electronic filing).
Please visit the WIPO website to create your ePCT account and obtain your digital certificate, also to read further about ePCT ( https://pct.wipo.int/LoginForms/epct.jsp )
The application form may be posted directly to us or hand delivery at our Head Office in Kuala Lumpur ; or lodge them at any branch Offices in Sabah or Sarawak.
There are three main fees that must accompany the application. These are the transmittal fee, the international filing fee and the search fee. The transmittal fee covers the work completed by MyIPO, the international filing fee covers the work completed by WIPO and the search fee covers the work completed by an International Searching Authority (ISA).
MyIPO collects the transmittal fee but the two other fees are sent to the WIPO and ISA respectively. All fees must be paid in Malaysian Ringgit (RM).
International Search Report
An International Searching Authority (ISA) is to undertake an international search, that is, to identify any ‘prior art' or written material in determining whether or not the invention is new. The results of the international search can help the applicant to evaluate his chances of getting a patent in the countries that he designates.
The following ISAs specify by MyIPO that will undertake the international search :
All applications are published usually eighteen months after the application date or priority date if the applicant claiming priority. WIPO produces a journal called the PCT Gazette, which is published every week. It contains the summary page of all applications. The PCT Gazette is also available on the WIPO Internet site.
International Preliminary Examination
If the applicant choose to have an international preliminary examination, an International Preliminary Examining Authority (IPEA) will undertake it. The applicant must make a specific ‘demand' , and should be submitted directly to the IPEA. The IPEA will examine the application and send an international preliminary examination report which will give the applicant an opinion on whether his invention suitable for a patent to be granted.
The following IPEAs specify by MyIPO that will undertake the international preliminary examination :
The National Phase
The applicant has to enter the national phase in order his international application to proceed separately in any or all of the countries which are party to the PCT. The applicant has up to 30 months after his priority date to enter the national phase in Malaysia.
The applicant should notify MyIPO by :
PCT contracting states as of April 2010
Main Objectives of the PCT
- To lodge one application, with one Office and in one language,
- Formal examination by a single patent office,
- Good International search & examination reports,
- Provides more time to the applicant.