DR.

RAM MANOHAR LOHIYA NATIONAL

LAW UNIVERSITY

2019-2020
Final draft of:
Patent Drafting and Specification Writing:
Protection of Inventions through Patent
Cooperation Treaty

Submitted to:- Submitted by:-

Mr. Manish Singh Ayushi Verma
Asst.professor Section -A
Rmlnlu Enrollment no.-35

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 Semester
VIII

ACKNOWLEDGMENT:

I would like to express my heartfelt gratitude to my teacher and mentor Mr.

Manish Singh (assistant professor), a special thanks to the Vice Chancellor
of Dr. Ram Manohar Lohiya National Law University, Mr. Gurdeep Singh
for providing me with this opportunity. I also greatly acknowledge the help
and guidance provided to me by Prof. C.M. Jariwala (Dean Academics).

Thanks and appreciation to my family members for their constant

support, to the library staff and other members of this institution and lastly to
my friends for their help.

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TABLE OF CONTENTS:

• Introduction

• Emergence of PCT

• Procedure under PCT

• Objectives of PCT

• Role of WIPO in the PCT

• Organization and Administration

• Impact of PCT on India

• Conclusion

• Bibliography

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INTRODUCTION:

Protection and enforcement of Intellectual Property Rights (IPR) are major components of
international trade and scientific corporation and Patent Cooperation Treaty (PCT) has
ushered an era of international cooperation in the diverse intellectual property systems with
reference to patents.

Meaning of Patent

A patent is an exclusive right granted for an invention, which is a product or a process that

provides, in general, a new way of doing something, or offers a new technical solution to a
problem.  In order to be patentable, the invention must fulfil certain conditions.

Patent Cooperation Treaty (PCT) 1970

The Patent Cooperation Treaty (PCT) is the special agreement under Paris Convention for
international cooperation towards harmonization of patenting at the international level. The
PCT is an international treaty, administered by the World Intellectual Property Organization
(WIPO), between more than 140 Paris Convention countries. The PCT makes it possible to
seek patent protection for an invention simultaneously in each of a large number of countries
by filing a single “international” patent application instead of filing several separate national
or regional patent applications. The granting of patents remains under the control of the
national or regional patent Offices in what is called the “national phase”. It doesn’t provide
for the grant of international patents. The responsibility for issuing patent remains solely
with the patent offices of member countries as per their rules.

Emergence of Patent Cooperation Treaty

From an unstructured beginning around the Fifteenth Century in Italy, the patent system has
attained some formal status through specific statutes in various countries around the world.
With the onset of Industrial Revolution, the modern patent system was catalyzed for
commercial exploitation of inventions. From time-to-time, the patent system has undergone

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changes to keep pace with rapid advances in science and technology as well as with the
evolving international trade practices.

The traditional patent system requires the filing of individual patent applications in each
country where the patent protection is sought, with the exception of various regional patent
systems such as African Intellectual Property Organization (OAPI) System, the Harare
Protocol System of the African Regional Industrial Property Organization (ARIPO), the
Eurasian Patent System, and the European Patent System. Most importantly, the applicant
has to incur expenses for translation, patent attorneys or agents in various countries and
payment of fees to the Patent Offices, all at a time at which he often does not know whether
he is likely to obtain a patent or his invention is really new compared with the state-of-the-
art. Moreover, every single Patent Office with which an application is filed has to carry out a
formal examination of every application filed with it. Each Patent Office has to make a
search to determine the state-of-the-art in the technical field of the invention and has to carry
out an examination as to its patentability.

In order to reduce the duplication of the effort both for the applicants and the National Patent
Offices, an idea was mooted in 1967 to bring about international cooperation in patenting.
As a result, a draft of an international treaty was prepared by the United International Bureau
for the Protection of Intellectual Property (BIRPI), the predecessor of World Intellectual
Property Organization (WIPO), which underwent revision later. Subsequently, a Diplomatic
Conference held in Washington in June 1970 adopted a treaty called the `Patent Cooperation
Treaty’ (PCT). The treaty came into force on 24th January 1978, and became operational on
1st June 1978 with an initial 18 contracting countries. As on 1st September 2003, as many as
122 countries are party to the PCT. India joined the PCT with effect from 7th December
1998. Currently administered by WIPO, the PCT is open to countries party to the Paris
Convention for the Protection of Industrial Property. Instruments of ratification and
accession must be deposited with the Director General of WIPO. Thus, the emergence of
PCT is one of the major attempts to simplify the patent system at the international level.

PCT is facilitating treaty and one of the most significant advancement in international
cooperation in the fields of patents. The principle objective of the PCT is to provide a more

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efficient, effective and economical means for protection in several countries. As per
conventional system, an inventor has to file separate applications in each country where he
desires to seek protection for his invention. Under PCT system, the inventor has required to
file a single application in one language having effect in each of the countries parties to the
PCT, by indicating the names of the countries where he desires the protection. This system
also involves the formal examination of the international application by a single office and
also international search on the prior art. The national patent offices are free to examine the
application form from perspective of national legislations and charge the fees for the same.

Procedure under PCT:

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World
Intellectual Property Organization (WIPO) and offers patent applicants an advantageous
route for obtaining patent protection internationally.

Filing - An international application, containing a request, claiming priority on one or more

claims, one or more drawings (where required), and an abstract, should be filed. The
application shall, be in a prescribed language, comply with the prescribed physical
requirements, comply with the prescribed requirement of unity of invention, be subject to the
payment of the prescribed fees.

Any resident or national of a Contracting State may file an international application and the
international application shall be filed with the prescribed receiving Office, which will check
and process. Any international application fulfilling the requirements shall be equivalent to a
regular national filing.

International Search –

Applicant can file a single, uniform international application in one language to seek patent
protection in a large number of countries, thereby avoiding the need to file several separate
applications, possibly in different languages, at each national or regional patent office. At the
moment of filing, all Contracting States are automatically designated in the application, but
the applicant ultimately decides in which national or regional offices to seek patent
protection. It should be noted that an “international patent”, as such, does not exist and that

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the granting of patents remains under the control of national or regional patent offices in
what is called the “national phase”.

One copy (record copy) of the international application shall be transmitted to the
International Bureau, and another copy (search copy) shall be transmitted to the competent
International Searching Authority. The record copy shall be considered the true copy of the
international application. The international application shall be considered withdrawn if the
record copy has not been received by the International Bureau within the prescribed time
limit.

Each international application shall be the subject of international search. The objective of
the international search is to discover relevant prior art. International search shall be made on
the basis of the claims, with due regard to the description and the drawings. The international
search report shall be established within the prescribed time limit and in the prescribed form
and shall be transmitted by the International Searching Authority to the applicant and the
International Bureau.

International Publication –

The International Bureau shall publish international applications promptly after the
expiration of 18 months from the priority date of that application or before if the applicant
asks for it. The language and form of the international publication and other details are
governed by the Regulations. The international bureau has the power to omit any content
which it thinks contrary to the public policy or morality. So, the international phase usually
lasts for a period of 18 months and mainly consists of a formal examination of the
application, international search, optional supplementary international search, optional
international preliminary examination and international publication of the application.

As far as the protection of any rights of the applicant in a designated State is concerned, the
effects, in that State, of the international publication of an international application shall be
the same as those which the national law of the designated State provides for the compulsory
national publication of unexamined national applications.

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The International Bureau and the International Searching Authorities shall not allow access
by any person or authority to the international application before the international
publication of that application, unless requested or authorized by the applicant.

The national Office shall also not allow access to the international application by third
parties, unless requested or authorized by the applicant, before the earliest of the date of the
international publication of the international application, date of the receipt of the
communication of the international application, date of the receipt of a copy of the
international application.

The applicant shall furnish a copy of the international application and a translation thereof,
and pay the national fee, to each designated Office not later than at the expiration of
30 months from the priority date. No designated Office shall process or examine the
international application prior to the expiration of the applicable time limit of 30 months.

International Preliminary Examination –

On the demand of the applicant, his international application shall be the subject of an
international preliminary examination. Any applicant who is a resident or national of a
Contracting State and whose international application has been filed with the receiving
Office of or acting for such State, may make a demand for international preliminary
examination. The demand for international preliminary examination shall be made separately
from the international application. The demand shall contain the prescribed particulars and
shall be in the prescribed language and form.

The objective of the international preliminary examination is to formulate a preliminary and

non-binding opinion on the questions whether the claimed invention appears to be novel, to
involve an inventive step (to be non-obvious), and to be industrially applicable.

The international preliminary examination report shall state in relation to each claim,
whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness),
and industrial applicability. The statement shall be accompanied by the citation of the
documents believed to support the stated conclusion with such explanations as the
circumstances of the case may require. The statement shall also be accompanied by such
other observations as the Regulations provide for.

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National phase –

After the end of the PCT procedure, inventor can start to pursue the grant of patents directly
before the national (or regional) patent Offices of the countries in which he want to obtain
them. No national law shall require compliance with requirements, except provided in this
treaty, relating to the form or contents of the international application. Where the applicant,
for the purposes of any designated State, is not qualified according to the national law of that
State to file a national application because he is not the inventor, the international application
may be rejected by the designated Office. Under the PCT, applicants have at least 18 months
from the date on which the PCT application was filed before entering the national phase at
individual patent offices. This 18-month delay affords the applicant additional time –
compared to that provided under the Paris Convention – to evaluate the chances of obtaining
a patent and plan how to use the invention commercially in the countries where protection is
sought. In the national phase, each patent office is responsible for examining the application
in accordance with its national patent law and deciding whether or not to grant patent
protection. The time required for the examination and grant of a patent varies across patent
offices.

Objectives of PCT –

The PCT system offers investors and industry a better route for obtaining patent protection
internationally as by filing one international patent application protection for an invention
can be simultaneously sought in more than 142 countries which are signatory to PCT. This
system advantageous both to the applicant and patent offices of PCT member countries as
there is certain uniformity in the formality requirements, the international search and the
preliminary examination report and the centralised international publication provided by the
PCT system.

While the traditional patent system requires the filing of individual patent application in each
country where the protection is sought which involves not only preparation and filing of
applications in several countries in different languages in different systems but also added
cost in terms of payment of fees to the patent offices, expenses on translation, fees to
attorney etc.

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The aim of PCT is generally to facilitate the attainment of the larger objectives of patent
systems

 Making a contribution to the progress of science and technology.

 Providing optimum legal protection to investors.

 Simplifying and rendering more economic protection to the investors.

 Facilitating and accelerating access by the public to technical information.

 Fostering and accelerating the economic development of developing countries.

The principle objectives of PCT specifically are –

 To offer solutions and options for addressing the limitations of traditional patent system,
especially when patenting is desired in many countries.

 To simplify (more efficient and economical) the procedure for seeking patent protection
for the users of the patent system (applicants and investors), patent offices.

The PCT is useful as it gives more time and information to the applicant in order to –

 Evaluate and better the changes of protecting the invention before major costs in foreign
countries are incurred.

 Keep options while investigating its commercial possibilities abroad.

 Help obtain more reliable patents aboard.

Apart from above mentioned advantages PCT system also helps in

 Improving the status of the country in the area of intellectual property worldwide.

 Paving the way for generating foreign exchange through exports.

 Encouraging filing of applications in other countries.

 Efficient patent portfolio management.

 Allowing staggering of expenses.

 Allowing additional time for taking more informed decisions.

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Role of WIPO in the PCT -

 receiving and storing all application documents,

 performing a formalities examination,

 publishing the international application on WIPO’s online database patent scope,

 publishing data about the PCT application as prescribed in the treaty and regulations, 

 translating various portions of the PCT application and certain associated documents into
English and/or French, where necessary,

 communicating documents to Offices and third parties, and

 providing legal advice on request to Offices and users.

WIPO also:

 provides overall coordination of the PCT system;

 provides assistance to existing, new and potential Contracting States and their Offices;

 provides advice on implementing the PCT in the national legislation and on setting up
internal procedures in the Contracting States’ patent Offices;

 publishes the PCT Applicant’s Guide and the PCT Newsletter; 

 creates and disseminates PCT information via the PCT website, webinars, and through
telephone and e-mail assistance; 

 Organizes and gives PCT seminars and training courses.

Organization and Administration:

The PCT is an ongoing international attempt of WIPO to rationalize and facilitate a cost-
effective system for filing patents internationally, conducting prior art searches and for
the examination of patent applications. The PCT has created a Union, which has an
Assembly. For effective discharge of its responsibilities, the PCT is assisted by a number
of organs, as under:

 International Patent Cooperation Union

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  It is constituted by the countries party to the treaty for bringing about cooperation
in the filing, searching and examination of applications for the protection of
inventions, as well as for rendering special technical services.

 Assembly

Every country party to the PCT is a member of the Assembly. Important tasks that
are assigned to the Assembly include i) amendment of the regulation issued under
the treaty (numbering 69 Articles), ii) adoption of the biennial programme and
budget of the Union, and iii) fixing of certain fees connected with the use of the
PCT system.

 International Bureau

It performs the administrative tasks concerning the Union. It publishes the PCT
Gazette and brings out other publications.

 Periodic Meeting

The overall functioning of the PCT is streamlined through periodic meetings of

the following:
i) PCT Assembly (ordinary and extraordinary sessions)

ii) PCT Committee for Administrative and Legal Matters;

iii) PCT Committee for Technical Cooperation;

iv) PCT Informal Consultation Meeting on Electronic Filing;

v) Meeting of International Authorities under the PCT;

vi) Committee on Reform of the PCT; and

vii) Working Group on Reform of the PCT.

e) Information Service

In order to facilitate the member countries, WIPO brings out the following publications on
the PCT and its functioning:

 PCT Applicant’s Guide in English and French in two volumes;

Volume I : Introduction to the International Phase

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 Volume II : Introduction to the National Phase

 PCT Newsletter in English (monthly); and

 PCT Information Service

Impact of PCT on India:

It is heartening to note that more and more companies and individual applicants are using the
PCT route for filing applications in various contracting states. The simple reason behind this
is that the PCT procedures are being continually revised and refined to make it cost effective,
easy and advantageous to greater number of applicants. No other IPR system provides such
flexibility to suit the needs of the applicants. Interestingly, the developing countries are
striving hard for making inroads for their own products in the global market and are joining
such international agreement in large numbers. This strategic policy not only boosts the
investor’s confidence but also adds economic value to promote intellectual property
management in their national economies. PCT also offers practical ways of reducing the
administrative burden on individual patent offices by facilitating search and examination
and elimination much of the formality of checking data entry and processing and publication.

India acceded to the Paris convention for the Protection of Industrial Property in December
1998 and joined the PCT union at the same time. The accession to the PCT is a landmark
decision in the history of the patent system in India. It has opened the gateway for entry of
the advance technology in India. In the year1999, a beginning was made by posting 61 PCT
applications origination from India. Since the joining of the PCT India has been designated
in over 2,50,000 international applications. The entry into the national phase has already
commenced from August 2000 and over 13,000 such applications have been received till
now.

Thus, it is seen that after accession of India to the PCT, Indian inventors have started taking
full advantage of the PCT system and a lot of applications from aboard are also being
received under the PCT system, accounting for the major proportion of applications received
by the patent offices in India.

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CONCLUSION:

As a means for filing the unifying the patent filing procedure, the PCT has been very
successful. The PCT is now by far the preferred means if an application is to be filed in a
number of states. However, as a means for unifying the search and examination procedure, it
has not been such successful.

Several advantage of the PCT in terms of enabling more applicants from developing and
least developed countries to seek patent protection in more contracting states, opportunities
arising for technology transfer from foreign countries and in turn stimulating technology
related FDI, development of local industries using better and appropriate technology,
upgrading of technical skills and providing a stimulus for economic and technological
development etc. are there for all to see. Other than the general economic benefits to the
national economy in terms of better technology transfer, creation of jobs etc. there are
several advantages to the contracting states in terms of strengthening of economic
cooperation as well as with patent offices greater awareness and publicity among the
applicants about the countries patent system. Access to PCT for the country’s investor and
industry, facilities access to more technological knowledge and inflow of latest technology is
certainly beneficial.

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BIBLIOGRAPHY

https://www.wipo.int/pct/en/

https://en.wikipedia.org/wiki/Patent_Cooperation_Treaty

https://www.bitlaw.com/source/treaties/pct.html

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