What is Patent Cooperation Treaty (PCT)?
The PCT is an international treaty with more than 155 Contracting States, which provides the applicants to seek patent protection for an invention simultaneously in many 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. This simply means that PCT does not grant patent and provides an extended timeline of 20,30 or 31 months to enter a country, called the “national phase”
Steps of filing a PCT application includes:
Filing: file an international application with a national or regional patent Office or WIPO.
International Search: Choose an “International Searching Authority” (ISA) which shall identify the published patent documents and technical literature (“prior art”) for determining patentability of your invention and provide a written opinion.
International Publication: Publication of the international application is after the 18 months from the filing date.
Supplementary International Search (optional): a second ISA can be requested, which is more comprehensive due to diversity of prior art in different languages and different technical fields.
International Preliminary Examination (optional): in case an applicant amends the application based on the ISA, on request, an additional patentability analysis, usually on an amended version of your application can be provided.
National Phase: after the end of the PCT procedure, usually at 20, 30 or 31 months from the earliest filing date of your initial application, one can start prosecution directly before the national (or regional) patent Offices of the countries to obtain a patent.
Under PCT Rule 26bis.,wrong priority date entered during PCT filing can be rectified
26bis.1 Correction or Addition of Priority Claim
The applicants must request for correction within 16 months from the date of priority. A request must be made within 4 months of the International Filing date. In cases where the date of priority after correction or addition changes to an earlier date then the 16 months from the priority shall be calculated from the earlier priority date. In cases where the priority date changes from an earlier priority date to a later priority date even then the priority is calculated from the earlier priority date.
Points to remember: Applicants must request changes within 16 months from the priority date i.e. suppose if you file your application in the 12 months, so within 4 months a correction or addition should be requested. All the remaining timelines will be revised in accordance with the amended priority date.
26bis.2 Defects in Priority Claims
In case the applicants fail to make a request for correction within 16 months of the priority date or failed to submit a PCT request in accordance to Rule 26bis.1 the receiving office or the International bureau can be requested to publish information concerning the matter under PCT Rule 26bis.2(e)
Such publication would serve to alert designated Offices and third parties to the possibility that a request for correction/restoration of the priority claim may be made in the national phase under national laws.
Points to remember: The request for publication under Rule 26bis(e) should be filed directly with the International Bureau, together with the special fee payable to the International Bureau for this service. The current fee is 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one.
26bis.3 Restoration of Right of Priority by Receiving Office
In case an international application is filed after the expiration of 12 months from the priority date but before the period of 2 months from that date, the receiving office may subject to the criterion of restoration may restore a right to priority if the application proves that the failure to file the international application within the priority period:
- occurred in spite of due care required by the circumstances having been taken; or
- was unintentional.
Points to remember: The national phase countries are not bound by the rules of the PCT and the restoration of priority is not assured in the national phase.
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