Patent Cooperation Treaty

Patent Cooperation Treaty (PCT): Roots of
Filling
Shobhaben Pratapbhai Patel School of Pharmacy & Technology Management

WHAT IS THE PATENT COOPERATION TREATY
(PCT)?
• The PCT is an international treaty with more than 150 Contracting States.
• The PCT makes it possible to seek patent protection for an invention
simultaneously in 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”.
OVERVIEW OF THE PCT SYSTEM
EFFECT OF AN INTERNATIONAL PATENT
APPLICATION?
• International patent application, provided that it complies with the minimum requirements for
obtaining an international filing date, has the effect of a national patent application (and certain
regional patent applications) in or for all PCT Contracting States.
• Applicant can file an international patent application, in most cases, with your national patent
Office, or directly with WIPO if permitted by State’s national security provisions. Both of those
Offices act as PCT “receiving Offices”.
• In the vast majority of cases, applicants file PCT applications electronically. You can file PCT
applications electronically with any competent receiving Offices which accepts such filings.
Preparing the PCT application using the WIPO web service (ePCT-filing) or the software provided
by WIPO (PCT-SAFE) helps to prepare your applications by automatically validating the entered
data and drawing your attention to incorrectly or inconsistently completed parts.
• PCT applicants generally pay three types of fees when they file their international
applications:
(a) an international filing fee of $1448 ,
(b) a search fee which can vary from approximately $163 to $2178 depending on
the ISA chosen, and
(c) a small transmittal fee which varies depending on the receiving Office.
ULTIMATELY, THE PCT:
• – brings the world within reach;

– streamlines the process of fulfilling diverse formality requirements;
– postpones the major costs associated with seeking multinational patent
protection;
– provides a strong basis for patenting decisions; and
– is used by the world’s major corporations, research institutions and universities
when they seek multinational patent protection.4
CASE STUDY 1 - PAINLESS NEEDLE
• Because Terumo is a multinational corporation at the forefront of innovating new

medical technologies, protecting its intellectual property (IP) is an important part
of its business strategy. Securing IP rights (IPRs) deters copying and gives the
company a competitive advantage, allowing it to continue to develop medical
products that help people. In line with this strategy, Terumo filed
an application under the Patent Cooperation Treaty (PCT) system in 2003
(published in 2004) for its tapered and liquid introducing injection needle. By
2010, the company had hundreds of PCT applications.
CASE STUDY 2 – A LOOK INTO P&G’S USE OF THE
PCT
• P&G has filed about 11,000 applications through the PCT since December of
1990. They cite three main factors for filing through the PCT:
• 1. controlling costs,
• 2. maximizing flexibility and efficiency, and
• 3. improving portfolio management.
Controlling Costs
• The PCT allows them at least 18 months to defer costs of national stage entry, at which point they can evaluate the invention and change
its priority tier or abandon.
• The 18-month period also allows them to collect legal, technical and commercial information.
• The International Search Report and International Search Authority/Written Opinion provides valuable information on what to expect
during prosecution.
Maximizing Flexibility and Efficiency

• P&G is able to electronically file a single PCT application.
• The PCT preserves P&G’s option to enter into all PCT member states, which is valuable since it is not uncommon for the list of countries
where they are seeking protection to change.
• Using Chapter II examination, P&G is able to submit amendments to the application, as well as address or eliminate issues regarding
novelty, inventive step and industrial applicability.
Improving Portfolio Management

• P&G is able to make the right strategic decisions at the right time with maximum information regarding the invention.
• P&G is able to review the status of the application at various stages throughout the PCT timeline.
• What’s interesting is that these specific reasons are echoed by nearly all applicants who choose to file via the PCT, from the sole inventor
to international, multibillion-dollar corporations. Given the economic downturn in the last year and a half, it’s not surprising that applicants
are looking to control their IP costs without sacrificing portfolio control and efficiency
https://www.wipo.int/export/sites/www/pct/en/pct_strategies/pct_for_the_americas_guffey.pdf
THANK YOU

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Patent Cooperation Treaty (PCT): Roots of

Shobhaben Pratapbhai Patel School of Pharmacy & Technology Management

• – brings the world within reach;

• Because Terumo is a multinational corporation at the forefront of innovating new

Maximizing Flexibility and Efficiency

Improving Portfolio Management

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