20 December 2020

Patent Cooperation Treaty

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Two of the problems of applying for a patent are:
  • Patent protection is territorial: that is to say, a patent enables an owner to prevent others from making, using, offering for sale, selling, or importing his or her invention in the country, group of countries or territory for which the patent is granted and not beyond; and
  • In order to get a patent, an applicant has to disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person with the relevant skill and knowledge.
Thus, if an inventor gets a patent for the United Kingdom but nowhere else, there is nothing to stop an entrepreneur in India, China, Continental Europe or even the Republic of Ireland from making and selling your product everywhere in the world except the UK.

The only way to prevent that from happening was to seek patents in all the markets in which the applicant intends to market his or her invention as well as every country in which a competing product can be made.  As a patent will be granted only for an invention that is new, that used to mean simultaneous applications to every patent office from which a patent was required. 

Life became a lot easier for applicants in 1883 when the UK and other leading countries established the 
Paris Convention for the Protection of Industrial Property ("Paris Convention").  Art 4A (1) and art 4C (1) of the Convention gave a person who had duly filed an application for a patent in any of the contracting countries 12 months priority over anyone else who might file a patent for the same invention.  So long as an application was made within a year of the first application in the first country applications in all other countries were backdated to the first filing.

As more and more countries industrialized the task of filing multiple applications even over the period of a year became increasingly burdensome. The solution was the Paris Cooperation Treaty ("PCT") which made it possible to seek patent one' protection for an invention simultaneously in every country that is a party to the PCT by filing an "international" patent application with the applicant's home intellectual property office or, ins some cases, with the World Intellectual Property Organization ("WIPO").

The WIPO made the video that appears at the beginning of this article on 17 Dev 2020.  More useful introductory information is available from PCT FAQ on the WIPO website,   There are now 153 countries that are party to the PCT.  They include China, the USA, Japan, India, Germany and France.   Big countries that are not yet party to the PCT include Argentina, Bangladesh, Pakistan and Venezuela.   The UK Intellectual Property Office has published a useful booklet entitled Patent Cooperation Treaty (PCT) for Private Applicants which was last updated on 1 July 2020.  I reviewed a previous edition of the booklet in 
Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney on 1 Nov 2016.

Anyone wishing to discuss this article or the PCT generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.

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