10 Facts about the Patent Cooperation Treaty

ThinkstockPhotos-485556609Park IP has recently been educating and preparing many of our clients for the AIA Foreign Filing Aftershock, driving a national campaign to raise awareness about the pending impact of the 2013 legislation. The dramatic spikes in applications filed within a couple weeks of March 16, 2013, are approaching their 30-month deadline for PCT National Phase Entry. The result is a corresponding surge in foreign filings, which will peak on September 15, 2015. Read more in What are the Risks of the AIA Foreign Filing Aftershock?.

As preparations increase to minimize the impact of the AIA’s Foreign Filing Aftershock, Park IP Market Researcher, Emma Cox, shares 10 facts about the Patent Cooperation Treaty (PCT).

The Patent Cooperation Treaty (PCT) is an international treaty that was enacted in 1970. The PCT establishes a uniform procedure for obtaining international patent protection in member states.  A PCT application is never “granted;” inventors cannot secure protection through the procedure alone.  The PCT process affords applicants an additional 18 months to decide on a list of countries in which to seek protection.  Applicants also receive an International Search Report and a Written Opinion on Patentability to aid in that decision.

Here are 10 interesting facts about the PCT, which will help you to make an informed decision when it comes to foreign filing.

FACT #1:

Under the PCT, an applicant can seek to protect an invention in every member country (all 148) instead of filing directly with each country under the Paris Convention.

FACT #2:

According to the Patent Cooperation Treaty Yearly Review 2014, published by the World Intellectual Property Organization (WIPO), since 2010 the share of international filings under the PCT has increased from 70% to 78%; direct European filing has decreased from 30% to 22% during the same period.

FACT #3:

One of the prerequisites to file a patent application is one of the proposed applicants must be a resident of a contracting state to the PCT. If there is no resident applicant, then a PCT date will not be accorded.

FACT #4:

A recent statistic published by WIPO in the yearly PCT review highlighted that in 2013, Argentina had by far the largest proportion of filings with co-applicants. This reflects the fact that Argentina is not a PCT member; therefore, forcing its applicants to co-file with an applicant that resides within one of the member countries.

FACT #5:

WIPO has made it convenient for individuals and businesses to search 43 million patent documents including 2.5 million published international patent applications filed under the PCT. The website is https://patentscope.wipo.int/search/en/structuredSearch.jsf.

FACT #6:

Research conducted by WIPO measures how much a country specializes in a given technological field. It is calculated by a relative specialization index (RSI). It considers the size of the country and focuses on the concentration in a specific technology field. According to the PCT Review published by WIPO, the United States has a high share of PCT applications in computer technology followed by pharmaceuticals.

FACT #7:

If the entry into the National or Regional Phase is not performed within the prescribed time limit, the PCT application generally ceases to have the effect of a national or regional application.

FACT #8:

Most non-English speaking countries require translation of the PCT Application into an official language when entering National Phase. Patent translation is a demanding service that requires both linguistic expertise and a high level of technical and scientific competency. Translations prepared without the proper legal and patent knowledge or expertise can lead towards a risk of obstacles in the enforcement of the patent post-grant.

FACT #9:

Statistics released from the World Intellectual Property Organisation show that during 2014 the most commonly published language filed by patents in the United States, under the PCT, was English with over of 63,000. The second most commonly published patent language was Japanese.

FACT #10:

September 15th is fast approaching, when a historically large number of PCT applications will need to be translated and filed for National Phase Entry all at the same time. Plan ahead and submit your applications now.  Don’t be too late to translate!

As leader in the global patent translation industry, Park IP Translations provides foreign filing solutions for clients all over the world. We manage the filing process along with the translation of patent applications. Part of this process is to liaise closely with each local patent office and our clients. Tracking patent trends and changes in application procedure is crucial to ensure all applications are represented correctly for each European country.

Emma Cox

Emma.cox@welocalize.com

Additional Resources

To learn more about Park IP’s Foreign Filing Services click here.

For more information on AIA Foreign Filing Aftershock, read: Ten Important Facts About AIA and Foreign Filing.

To access our AIA Planning Checklist, visit http://toolatetotranslate.com/wp-content/uploads/2015/04/AIA-Checklist.pdf.

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