intellectual property rights

1. GE18051-INTELLECTUAL PROPERTY
RIGHTS
1

2. INTRODUCTION TO IPR & RELATED AGREEMENTS AND
TREATIES (UNIT 2)
• Types of IP: Patents, Trademarks, Copyright & Related Rights,
Industrial Design, Traditional Knowledge, Geographical Indications.
• History of GATT & TRIPS Agreement; Madrid Agreement; Hague
Agreement; WIPO Treaties; Budapest Treaty; PCT;
• Indian Patent Act 1970 & recent amendments.
2

3. WHAT IS INTELLECTUAL PROPERTY?
• Intellectual property (IP) refers to creations of the mind.
• Everything from works of art to inventions, computer programs to trademarks
and other commercial signs.
3

4. WHY DOES IP MATTER?
• Creativity and inventiveness
are vital
i. They spur economic
growth
ii. create new jobs and
industries
iii. enhance the quality and
enjoyment of life
4

5. • The progress and well-
being of humanity depend
on our capacity to come up
with new ideas and
creations.
• Technological progress
requires the development
and application of new
inventions, while a vibrant
culture will constantly seek
new ways to express itself.
5
WHY DOES IP MATTER?

6. INTELLECTUAL PROPERTY RIGHTS
• Intellectual property rights are also
vital.
• Inventors, artists, scientists and
businesses put a lot of time, money,
energy and thought into developing
their innovations and creations.
• To encourage them to do that, they
need the chance to make a fair return
on their investment.
• That means giving them rights to
protect their intellectual property.
6

7. • Essentially, intellectual property rights
such as copyright, patents and
trademarks can be viewed like any
other property right.
• They allow the creators or owners of IP
to benefit from their work or from their
investment in a creation by giving them
control over how their property is used.
• IP rights have long been recognized
within various legal systems.
• For example, patents to protect
inventions were granted in Venice as far
back as the fifteenth century
7
INTELLECTUAL PROPERTY RIGHTS

8. DIFFERENT TYPES AND CATEGORIES OF IP
IP is often divided into two main
categories:
• Industrial property includes patents
for inventions, industrial designs,
trademarks and geographical
indications.
• Copyright and related rights cover
literary, artistic and scientific works,
including performances and
broadcasts.
8

9. IMPORTANCE OF IP SYSTEM
• An efficient and fair IP system
benefits everyone , including ordinary
users and consumers.
Examples
• The multibillion-dollar film, recording,
publishing and software industries,
which bring pleasure to millions of
people worldwide, would not thrive
without copyright protection.
• Trademark protection discourages
counterfeiting , so businesses can
compete on a level playing field and
users can be confident they are
buying the genuine article
9

10. 10

11. PATENT
Patents protect the innovative ideas of
processes.
There are two types of patents:
1.Utility patent – It protects a process,
manufacture, composition of matter,
and a useful machine.
2.Design patent – It protects the shape,
appearance, pattern design, layout,
and looks of a product.
11

12. • Patents were one of the first types of intellectual
property to be recognized in modern legal
systems.
• Today, patented inventions pervade every aspect
of life, from electric lighting (patents held by
Edison and Swan) to the iPhone (patents held by
Apple).
• By patenting an invention, the patent owner gets
exclusive rights over it, meaning that he or she
can stop anyone from using, making or selling
the invention without permission.
• The patent lasts for a limited period of time,
generally 20 years.
• In return, the patent owner has to disclose full
details of the invention in the published patent
documents.
• Once the period of protection has come to an
end , the invention becomes off patent ,
meaning anyone is free to make , sell or use it.
12
PATENT

13. The patent system aims to benefit
everyone:
• Firms and inventors can maximize
profits from their inventions during
the patent protection period.
• This rewards them for their effort and
so encourages more innovation,
which in turn benefits consumers and
the general public.
• Disclosure of the invention adds to
the body of public knowledge ,
enabling and inspiring further
research and invention.
13
PATENT

14. OBTAINING A PATENT
• Like most IP rights, patents are territorial
which means protection is granted within a
country under its national law.
• Different countries have somewhat different
laws, but generally in order to gain protection,
an inventor or firm will need to file an
application with a patent office
• Describing the invention clearly and in
sufficient detail to allow someone with an
average knowledge of the technical field to use
or reproduce it.
• Such descriptions usually include drawings,
plans or diagrams.
• The application help determine the extent of
protection to be granted by the patent.
• The application will then be examined by the
patent office to determine if it qualifies for
protection.
14

15. PATENT RIGHTS AND ENFORCEMENT
• Patent owners have the exclusive right to
commercially make, sell, distribute, import
and use their patented inventions within the
territory covered by the patent during the
period of protection.
• They may choose to make, sell or use the
invention themselves, let someone else make
or use it for a fee (known as licensing)
• Or sell the patent outright to someone else
who then becomes the patent owner.
• Or they may decide not to use the patented
invention themselves, but to stop their
competitors from using it during the patent
period.
15

16. PATENT INFRINGEMENT
• If some one else uses a patent invention without
the patent owner’s permission, the patent
owner can seek to enforce the rights by suing for
patent infringement in the relevant national
court.
• Courts usually have the power to stop infringing
behavior and may also award financial
compensation to the patent owner for the
unauthorized use of the invention.
• But a patent can also be challenged in court, and
if it is judged to be invalid, for example because
the court decides it is insufficiently novel, it will
be struck down and the owner will lose
protection in that territory
16

17. PATENT FILING FEES
• Inventors and firms must
decide in which territories they
want patent protection.
• Each patent office usually
charges fees for filing and
processing applications
• Plus periodic fees for
maintaining a patent once it
has been granted.
• The cost of dealing with
different national legal systems
can be high, as laws and
practices can vary widely
17

18. INDUSTRIAL DESIGN
• Industrial design rights cover those
elements of a product that are aesthetic or
ornamental (the way it looks and feels)
• Industrial designs are applied to a wide
variety of industrial products and
handmade goods
• Cars, telephones, computers, packaging
and containers, technical and medical
instruments, watches, jewelry, electrical
appliances, textile designs, and many other
types of goods.
18

19. WHAT INDUSTRIAL DESIGNS CAN BE PROTECTED?
• Industrial design law only protects those aspects
of a product that are ornamental
• Its technical features may be protected by
patent, if they meet the requirements for patent
protection.
• A design may consist of three-dimensional
features, such as the shape or surface of an
article, or two dimensional features such as
patterns, lines or color.
• To qualify for protection as an industrial design
under most national laws, the design must be
new and show a degree of originality or
individuality, meaning that it is not identical or
very similar to any previous design.
• Moreover, it must be capable of being produced
industrially, so unique artworks are not covered
19

20. INDUSTRIAL DESIGN RIGHTS
• Entitle the right to control the commercial production, importation and sale of products with the
protected design.
• As with most other forms of IP, owners can exploit design rights themselves, or license or sell
them to others, and can sue in the relevant national court to prevent infringement of their rights.
• This means that owners have a fair chance to recoup their investment in design, encouraging such
investment.
• Industrial design rights last for a limited period.
• This varies among countries, but the maximum period of protection in a country will be at least
ten years.
20

21. TRADEMARK
• Trademark is a sign capable of distinguishing the
goods or services of one enterprise from those
of other enterprises.
• Trademarks are essential to business. They take
many forms and identify a huge array of goods
and services.
• Enterprises spend enormous amounts of time
and money developing their brands and
trademarks.
• Legal protection allows the owner of a mark to
control who uses it.
• This means that enterprises can develop and
promote their goods and services without
having their reputation undermined by
counterfeiters.
• Consumers can rely on trademarks being
genuine. 21

22. DIFFERENT TYPES OF TRADEMARK
• All sorts of signs may be used as trademarks.
• Words, letters, numbers, symbols, colors, pictures, three-
dimensional signs such as shapes and packaging,
holograms, sounds, even tastes and smells.
• To be eligible for registration, the basic principle is that a
trademark must be distinctive, so it cannot just be a
generic description of the product or service.
• Nor can it be identical (or very similar) to a trademark
already registered or used for that type of product or
service.
• Trademarks are not just used to identify the goods and
services of a particular enterprise.
• There are also collective marks, each owned by an
association and used by its members.
• For example, professional associations of accountants,
engineers and architects often use this kind of mark.
22

23. PROTECTING TRADEMARK
• The best way of protecting a trademark is to register it.
• Owners of a registered mark have the exclusive right to control who uses it.
• They can use it to identify their own goods or services, or license or sell it for someone else to
use.
• To register a mark in a territory, the applicant needs to submit a reproduction of it to the
trademark office plus a full list of the goods or services to which it would apply.
• As well as being sufficiently distinctive and not conflicting with any existing mark.
• The mark must not be misleading or deceptive or violate public order or morality.
23

24. GEOGRAPHICAL INDICATIONS
• A geographical indication is a sign used on
products that have a specific geographical
origin and possess qualities or a reputation that
are due to that origin.
• Lots of examples of geographical indications –
often food and drink, such as Darjeeling tea
from India.
• Consumers buying products with geographical
indications want to know that the goods do
indeed come from the place in question and
conform to relevant standards,
• so there need to be some controls on the use of
geographical indications to protect their
valuable reputation.
24

25. DIFFERENT TYPES OF GEOGRAPHICAL INDICATIONS
• In order to function as a geographical
indication, a sign must identify a product
as originating in a given place, and the
qualities, characteristics or reputation of
the product should be essentially due to
that place of origin.
• This is often the case for agricultural
products, because they are influenced by
their local climate and environment,
• but geographical indications may also be
used for industrial products where a region
has a strong manufacturing tradition and
reputation, for instance Swiss watches
25

26. COPYRIGHT
• Copyright, or authors’ right, is a legal term
used to describe the rights that creators have
in their literary, artistic and scientific works.
• Copyright covers an enormous range of works.
• Not just books, music, paintings, sculpture and
films, but also computer programs, databases,
advertisements, maps and technical drawings,
among other things.
• Copyright is protected by a mixture of national
and international laws.
• The underlying aim of copyright law is to strike
the right balance between the interests of
content creators, developers and investors and
the public interest in being able to access and
use creative content.
26

27. WHAT WORKS DOES COPYRIGHT COVER?
• Copyright applies to the creative expression
of ideas in many different forms.
• Text, still or moving pictures, sound works,
three-dimensional shapes such as
sculptures and architecture, reference
works and collections of data.
• National copyright laws rarely provide an
exhaustive list of everything that is covered.
• However, copyright does not generally cover
ideas, procedures, methods of operation, or
mathematical concepts.
27

28. THE WORLD INTELLECTUAL PROPERTY ORGANIZATION
• WIPO is the global forum for intellectual property services, policy, information and cooperation.
• It was founded in 1967 and became a specialized agency of the United Nations in 1974.
28

29. WIPO
• There are four main elements of WIPO’s work.
• Shaping international rules - WIPO helps to develop and implement international law on
intellectual property. As we have seen, most IP law is limited to a particular national jurisdiction.
International law is crucial to facilitate protection across national boundaries.
• Delivering global services- WIPO delivers international filing and registration services. WIPO
charges fees for these services. In fact, it earns more than 90% of its income through such fees.
WIPO’s budget is paid for by the people and businesses who use its services.
• Cooperating with countries and partners to make IP work for development- An important part
of WIPO’s mission is to help all countries use and benefit from IP laws and protection systems.
Many of WIPO’s member states already have very sophisticated and longstanding national IP
systems, but some developing countries are working to build this capacity.
• Providing information and shared infrastructure - WIPO aims to be a comprehensive and
impartial source of information on global IP issues. WIPO has also developed infrastructure for
accessing and sharing knowledge, including enormous databases of patents, brands, trademarks,
appellations of origin and IP legislation.
• Visit the WIPO website to access a wealth of information: www.wipo.int
29

30. MADRID AGREEMENT
Concerning the International Registration of trademarks and the Protocol Relating to that
Agreement.
INTRODUCTION
• The Madrid System for the International Registration of Marks is governed by two treaties:
• the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911),
The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979.
• The Protocol relating to that Agreement, concluded in 1989, which aims to make the Madrid
system more flexible and more compatible with the domestic legislation of certain countries or
intergovernmental organizations that had not been able to accede to the Agreement.
• States and organizations party to the Madrid system are collectively referred to as Contracting
Parties.
• The system makes it possible to protect a mark in a large number of countries by obtaining an
international registration that has effect in each of the designated Contracting Parties.
30

31. WHO MAY USE THE SYSTEM ?
• An application for international registration may be filed only by a natural person or legal entity
having a connection ( through establishment, domicile or nationality ) with a Contracting Party to
the Agreement.
• A mark may be the subject of an international application only if it has already been registered
with the trademark office of the Contracting Party with which the applicant has the necessary
connections (referred to as the office of origin).
• However, where all the designations are effected under the Protocol ,the international application
may be based simply on an application for registration filed with the office of origin.
• An international application must be presented to the International Bureau of WIPO through the
intermediary of the office of origin.
31

32. THE INTERNATIONAL APPLICATION
• An application for international registration must designate one or more Contracting Parties in
which protection is sought.
• Further designations can be effected subsequently.
• A Contracting Party may be designated only if it is party to the same treaty as the Contracting
Party whose office is the office of origin.
• The latter cannot itself be designated in the international application.
• The designation of a given Contracting Party is made either under the Agreement or the Protocol,
depending on which treaty is common to the Contracting Parties concerned.
• If both Contracting Parties are party to the Agreement and the Protocol, the designation will be
governed by the Protocol.
• International applications can be filed in English, French or Spanish, irrespective of which treaty
or treaties govern the application, unless the office of origin restricts that choice to one or two of
these languages.
32

33. • The filing of an international application is subject to the payment of a basic fee , a
supplementary fee for each class of goods and/or services beyond the first three classes,
• and a complementary fee for each Contracting Party designated.
• However, a Contracting Party to the Protocol may declare that, when it is designated under the
Protocol, the complementary fee is replaced by an individual fee,
• Whose amount is determined by the Contracting Party concerned but may not be higher than the
amount that would be payable for the registration of a mark, at the national level, with its office.
33
THE INTERNATIONAL APPLICATION

34. INTERNATIONAL REGISTRATION
• Once the International Bureau receives an international application, it carries out an examination
for compliance with the requirements of the Protocol and its Regulations.
• This examination is restricted to formalities, including the classification and comprehensibility of
the list of goods and/or services.
• If there are no irregularities in the application, the International Bureau records the mark in the
International Register,
• Publishes the international registration in the WIPO Gazette of International Marks and notifies it
to each designated Contracting Party.
• Any matter of substance, such as whether the mark qualifies for protection or whether it is in
conflict with a mark registered previously in a particular Contracting Party, is determined by that
Contracting Party's trademark office under the applicable domestic legislation.
• The Gazette is available in electronic form (e-Gazette) on the Madrid system website.
34

35. STATEMENT OF GRANT OF PROTECTION OR REFUSAL OF
PROTECTION
• The office of each designated Contracting Party shall issue a statement of grant of protection under
Rule 18ter of the Regulations.
• However, when designated Contracting Parties examine the international registration for compliance with
their domestic legislation, and if some substantive provisions are not complied with, they have the right to
refuse protection in their territory.
• Any such refusal, including an indication of the grounds on which it is based, must be communicated to the
International Bureau, normally within 12 months from the date of notification.
• However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, this
time limit is extended to 18 months.
• That Contracting Party may also declare that a refusal based on an opposition may be communicated to the
International Bureau even after the 18-month time limit.
• The refusal is communicated to the holder of the registration or the holder's representative before the
International Bureau, recorded in the International Register and published in the Gazette.
• The procedure subsequent to a refusal (such as an appeal or a review) is carried out directly by the
competent administration and/or court of the Contracting Party concerned and the holder, without the
involvement of the International Bureau.
• The final decision concerning the refusal must, however, be communicated to the International Bureau,
which records and publishes it.
35

36. EFFECTS OF AN INTERNATIONAL REGISTRATION
• The effects of an international registration in each designated Contracting Party are, from the
date of the international registration, the same as if the mark had been deposited directly with
the office of that Contracting Party.
• If no refusal is issued within the applicable time limit, or if a refusal originally notified by a
Contracting Party is subsequently withdrawn, the protection of the mark is, from the date of the
international registration, the same as if it had been registered by the office of that Contracting
Party.
• An international registration is effective for 10 years.
• It may be renewed for further periods of 10 years on payment of the prescribed fees.
• Protection may be limited with regard to some or all of the goods or services or may be
renounced with regard to some only of the designated Contracting Parties.
• An international registration may be transferred in relation to all or some of the designated
Contracting Parties and all or some of the goods or services indicated.
36

37. ADVANTAGES OF THE MADRID SYSTEM
• The Madrid system offers several advantages for trademark owners.
• Instead of filing a separate national application in each country of interest, in several different
languages, in accordance with different national or regional procedural rules and regulations
• And paying several different (and often higher) fees, an international registration may be obtained
by simply filing one application with the International Bureau
• (through the office of the home country), in one language (English, French or Spanish) and paying
one set of fees.
• Similar advantages exist for maintaining and renewing a registration.
• Likewise, if the international registration is assigned to a third party, or is otherwise changed, such
as a change in name and/or address,
• This may be recorded with effect for all designated Contracting Parties by means of a single
procedural step.
37

38. HAGUE AGREEMENT
Concerning the International Registration of Industrial Designs (1925)
• Two Acts of the Hague Agreement are currently in operation – the 1999 Act and the 1960 Act.
• An international design registration may be obtained only by a natural person or legal entity
having a connection – through establishment, domicile, nationality or, under the 1999 Act,
habitual residence – with a Contracting Party to either of the two Acts.
38

39. HAGUE AGREEMENT
• The Hague Agreement allows applicants to register an industrial design by filing a single
application with the International Bureau of WIPO,
• enabling design owners to protect their designs with minimum formalities in multiple countries or
regions.
• The Hague Agreement also simplifies the management of an industrial design registration, since it
is possible to record subsequent changes and to renew the international registration through a
single procedural step.
• An international application may be governed by the 1999 Act, the 1960 Act or both, depending
on the Contracting Party with which the applicant has the connection.
39

40. • May be filed with the International Bureau of WIPO, either directly
• Or through the industrial property office of the Contracting Party of origin if the law of that
Contracting Party so permits or requires.
• In practice, however, virtually all international applications are filed directly with the International
Bureau, and the majority are filed using the electronic filing interface on WIPO's website.
40
INTERNATIONAL DESIGN APPLICATIONS

41. 41

42. • International applications may include up to 100 designs, provided they all belong to the same
class of the International Classification for Industrial Designs.
• Applicants may choose to file an application in English, French or Spanish.
• International applications must contain one or several reproductions of the industrial design(s)
and must designate at least one Contracting Party.
• International registrations are published in the International Designs Bulletin, issued weekly
online.
• Depending on the Contracting Parties designated, applicants may request that the publication be
deferred by a period not exceeding 30 months from the date of the international registration.
42
INTERNATIONAL DESIGN APPLICATION AND REGISTRATION

43. • Each Contracting Party designated by the applicant may refuse protection within 6 months, or
possibly 12 months under the 1999 Act,
• From the date of publication of the international registration.
• Refusal of protection can only be based on requirements of the domestic law other than the
formalities and administrative acts to be accomplished under the domestic law by the office of
the Contracting Party that refuses protection.
• If no refusal is notified by a given designated Contracting Party within the prescribed time limit ,
• The international registration has effect as a grant of protection in that Contracting Party, under
the law of that Contracting Party.
43
INTERNATIONAL DESIGN REGISTRATION

44. TERM OF PROTECTION
• The term of protection is five years, renewable for at least one five-year period under the 1960
Act, or two such periods under the 1999 Act.
• If the legislation of a Contracting Party provides for a longer term of protection, protection of the
same duration shall, on the basis of the international registration and its renewals, be granted in
that Contracting Party to designs.
• To facilitate access to the Hague system for design creators from least developed countries (LDCs),
the fees for an international application are, in their case, reduced to 10 per cent of the
prescribed amounts.
44

45. THE 1934 ACT
• The application of the 1934 Act was frozen as of January 1, 2010, meaning that no new
registration or designation under the 1934 Act could be entered in the International Register as of
that date.
• However, the renewal of existing designations under the 1934 Act and the recording in the
International Register of any change affecting such designations will continue to be possible up to
the maximum duration of protection under the 1934 Act (15 years).
45

46. GENERAL
• The WIPO Secretariat publishes a Guide to the International Registration of Industrial Designs for users of
the Hague system.
• The Hague Agreement, concluded in 1925, was revised at London in 1934 and at The Hague in 1960.
• It was completed by an Additional Act signed at Monaco in 1961 and by a Complementary Act signed at
Stockholm in 1967, which was amended in 1979.
• As noted above, a further Act was adopted at Geneva in 1999.
• The Hague Agreement created a Union, which, since 1970, has had an Assembly.
• Every member of the Union that has adhered to the Complementary Act of Stockholm is a member of the
Assembly.
• Among the most important tasks of the Assembly are the adoption of the biennial program and budget of
the Union and the adoption and modification of the implementing regulations, including the fixing of the
fees connected with the use of the Hague system.
46

47. THE 1999 ACT
• The Agreement is open to any WIPO Member State and to certain intergovernmental organizations.
• Instruments of ratification or accession must be deposited with the Director General of WIPO.
• While the 1960 Act remains open to States party to the Paris Convention for the Protection of Industrial
Property (1883),
• It is the more advantageous 1999 Act that governments of prospective Contracting Parties are encouraged to
join.
47

48. THE PATENT COOPERATION TREATY (PCT) (1970)
• The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention
simultaneously in each of a large number of countries by filing an "international" patent application.
• Such an application may be filed by anyone who is a national or resident of a PCT Contracting State.
• It may generally be filed with the national patent office of the Contracting State of which the applicant
is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva.
• The Treaty regulates in detail the formal requirements with which international applications must
comply.
48

49. 49

50. • Filing a PCT application has the effect of automatically designating all Contracting States bound by the PCT
on the international filing date.
• The effect of the international application is the same in each designated State as if a national patent
application had been filed with the national patent office of that State.
• The international application is subjected to an international search.
• That search is carried out by one of the competent International Searching Authorities (ISA) under the PCT
[1]
• Results in an international search report, that is, a listing of the citations of published documents that might
affect the patentability of the invention claimed in the international application.
50
THE PATENT COOPERATION TREATY (PCT) (1970)

51. • In addition, a written opinion on whether the invention appears to meet patentability criteria in light of the
search report results is also issued.
• The international search report and written opinion are communicated to the applicant who, after
evaluating their content, may decide to withdraw the application,
• in particular where the content of the report and opinion suggests that the granting of patents is unlikely, or
the applicant may decide to amend the claims in the application.
• If the international application is not withdrawn, it is published by the International Bureau, together with
the international search report.
• At the same time, the written opinion is made available on PATENTSCOPE.
51
THE PATENT COOPERATION TREATY (PCT) (1970)

52. • Before the expiration of 22 months from the priority date, the applicant has the option to request a
Supplementary International Searching Authority (SISA)
• to carry out an additional search of relevant documentation, specifically focusing on documents in the
particular language in which that authority specializes.
• The goal of this additional search is to reduce the likelihood of further documents coming to light in the
national phase that would make granting the patent unlikely.
52
THE PATENT COOPERATION TREATY (PCT) (1970)
[1] The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Philippines, the Republic of
Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic
Patent Institute and the Visegrad Patent Institute act as International Searching Authorities under the PCT (status on May 20, 2019).
[2] The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Philippines, the Republic of
Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic
Patent Institute and the Visegrad Patent Institute act as International Preliminary Examining Authorities under the PCT (status on May 20,
2019).

53. • An applicant that decides to continue with the international application with a view to seeking national
patents can, in relation to most Contracting States, wait until the end of the thirtieth month from the priority
date to commence the national procedure
• before each designated office by furnishing a translation of the application into the official language of that
office, paying to it the necessary fees and acquiring the services of local patent agents.
• If the applicant wishes to make amendments to the application , an optional international preliminary
examination may be requested.
• The result of the preliminary examination is an international preliminary report on patentability which is
prepared by one of the competent International Preliminary Examining Authorities (IPEA) under the PCT [2]
• And which contains a opinion on the patentability of the claimed invention.
53
THE PATENT COOPERATION TREATY (PCT) (1970)

54. • It provides the applicant with an even stronger basis on which to evaluate the chances of obtaining a patent
and,
• if the report is favourable, a stronger basis on which to continue with the application before national and
regional patent offices.
• If no international preliminary examination has been requested, the International Bureau establishes an
international preliminary report on patentability on the basis of the written opinion of the ISA and
communicates this report to the designated offices.
54
THE PATENT COOPERATION TREATY (PCT) (1970)

55. THE PCT - ADVANTAGE
(i) applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of
seeking protection in foreign countries, appoint local patent agents in each foreign country, prepare the
necessary translations and pay national fees;
(ii) applicants can rest assured that, if their international application is in the form prescribed by the PCT, it
cannot be rejected on formal grounds by any designated office during the national phase;
(iii) on the basis of the international search report and the written opinion, applicants can evaluate with
reasonable probability the chances of their invention being patented;
(iv) applicants have the possibility, during the optional international preliminary examination, to amend the
international application and thus put it in order before processing by the various patent offices;
55

56. (v) the search and examination work of patent offices can be considerably reduced or eliminated thanks to the
international search report, the written opinion and, where applicable, the international preliminary report on
patentability which are communicated to designated offices together with the international application;
(vi) applicants are able to access fast-track examination procedures in the national phase in Contracting States
that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements;
(vii) since each international application is published with an international search report, third parties are in a
better position to formulate a well-founded opinion about the potential patentability of the claimed invention;
and
(viii) for applicants, international publication on PATENTSCOPE puts the world on notice of their applications,
which can be an effective means of advertising and looking for potential licenses.
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.
56
THE PCT - ADVANTAGE