Patent Cooperation Treaty (PCT) #patent #pct #rolfclaessen
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Patent Cooperation Treaty (PCT) #patent #pct #rolfclaessen


– This video is about the
Patent Cooperation Treaty or the PCT. (dramatic music) With the Patent Cooperation
Treaty you can file one single patent
application in 150 countries as of this recording. The latest additions
are Djibouti, and Kuwait in June 2016. The most notable omissions
from the list of countries are probably Taiwan and Argentina. The PCT application will not reside in a granted patent but is
rather a patent application that has to be transformed
into patent applications in all different kinds
of different countries but it extends the
basically the priority date to 30 months from the filing date. So, if you have a first filing, let’s say, in Germany or
the US or in India or Japan, then you can not only
file patent applications within 12 month, the priority date but you can file the PCT application within 12 months and then you have another one and a half years, so total of 30 months
from the first filing of your first basic patent application. Even if you could feel
the PCT as a first filing, I typically see the PCT application as a way to extend the priority year from 12 months to 30 months,
so to two and a half years and basically I see four
advantages of the PCT application. First of all, you can postpone
the decision where to file in foreign countries from
12 months to 30 months. Then you can also maximally delay the granting procedures
in the various countries and their associated costs. Then thirdly, you can
maximally delay the translation into different languages which
is always a big cost factor and fourth, it is very easy to have a single application filed in many countries with all
formalities considered, so you don’t have to
think about to fulfill all the different requirements in all the different countries. One application is enough to
fulfill all formal requirements for a patent application
in all these countries. The conference leading to the PCT was held in Washington in 1970 and the treaty entered into force in 1978 with an original 18 members. You can file a PCT application with the Receiving Office. The Receiving Office is the patent office where the applicant is either national or has a residency or
has a place of business or as a default, you can also use the International Bureau
in Geneva in Switzerland. So, basically a German applicant could file the PCT application with the German Patent
and Trademark Office, with the European Patent Office or with the International
Bureau in Switzerland. Then a search is conducted by the International Searching Authority for applicants in Germany, that is typically the
European Patent Office and the search result
with a preliminary opinion regarding the patentability is delivered typically within nine months from filing the PCT application. If there has been an
earlier national application or a first filing, and the PCT application has
been filed within 12 months, the priority year, then
typically you get search results within 16 months from
the first filing date. As with most patent applications, the PCT application is
published within 18 months in one of the 10 official languages and after receiving the search, you can request a preliminary examination. However, in my personal experience, I cannot recommend to request
a preliminary examination for the following reasons. The examiners, for some reason, have very little incentive
to put a lot of work in the examinations, so what I typically receive is a copy of the preliminary opinion delivered during the search with
maybe two or three sentences that are dealing with the arguments that you filed when requesting
the preliminary examination and secondly, the national offices or the regional offices later on in the granting procedures are not bound by the
decision or by the opinion of the preliminary examination, at least in most cases. So, the national offices like the USPTO or the European Patent Offices will have their own opinion
about the patentability. Then typically 30 months
after the first priority date or the first filing date, you have to enter the
national or regional phases, so basically you have to enter the granting procedures
in the different countries where you want patent protection. Countries can also decide that
they have a later entry date and for example, the
European Patent Office decided that 31 months
after the first filing date is sufficient, so in most countries you have to enter the
national and regional phase after 30 months and with
the European Patent Office, you can enter the regional
phase after 31 months. Nowadays more than
200,000 PCT applications are filed every year and the PCT system becomes
more and more popular. If you want more information, please send me a comment
or send me a message or just visit the website of WIPO, so at www.wipo.int, I-N-T. If you are new to this channel, and want to learn more
about patents, trademarks and designs, please
subscribe to my channel. If you like the video,
hit Like under the video. If you have questions or comments, please leave them below this video and most importantly, protect
your intellectual property and go make it count.

3 Comments

  • jaivrat gupta

    Hey sir, I filed a national patent application 6 months back in India, I am now trying to license my idea to companies outside India( italy), how should I file an international patent application? how important is it for me? and what if I don't file an international patent application can they manufacture my product without my consent?
    Thank you for sharing your knowledge!

  • Amit Nain

    So How is PCT Application substantially different from Convention Application apart from period of entering into National Phase application which is 12 months for Convention Application and 30-31 months for PCT ones?
    Regrads.

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