PCT - Patent Cooperation Treaty
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Protect Your Business Right Now
A patent gives its holder complete exclusivity to exploit an invention. This means that only the holder (a person or company) has the right to produce and market a given product. But did you know that a patent can be filed in other countries around the world?
Registered in other territories, it serves to guarantee all rights over the industrial property of the invention. However, there are some particularities that must be known so that everything is done as planned.
Keep following and understand the possibility of patenting abroad and see some features!
What are the alternatives for registering an invention in other countries?
There are two ways to apply for protection of an invention in other countries: directly in the country where you wish to obtain protection: applying or not through the CUP (Paris Union Convention) or via the PCT (Patent Cooperation Treaty).
These ways of requesting protection depend on the company’s preparation for the process, the deadline requirements and the recognition in the market. Well, since the choice is very important, it is essential to understand the characteristics of each alternative. See below for more details on the procedures that are available for the patent!
CUP (Paris Convention)
In this case, the person or company files the patent application directly in the country where they wish to obtain protection. This means that the patent must be requested in a member country of this Treaty (such as Brazil) and, within 12 months, the same patent can be requested, individually, in another member country(ies). This procedure is necessary because the patent filing in other countries will include the claim of original ownership.
After the deadline has expired, the application cannot be filed in another territory with a priority claim. For this reason, it is important to be absolutely certain about your choices in order to avoid future regrets. Therefore, if the person or company is interested in trading or using the invention in other countries, protection will be viable.
If a patent is not filed in another country and an infringement occurs, it will not be possible to specifically allege it. This is because there is no patent for the invention in that country. Furthermore, it is important to keep in mind that each country has its own requirements. Therefore, it is necessary to adapt the patent project to each need.
PCT (Patent Cooperation Treaty)
The PCT, in turn, offers a very broad level of integration. It occurs through the WIPO (World Intellectual Property Organization). In this multilateral treaty, you have the opportunity to file a single international application and also have an extended period to enter the national phase (patent filing) in the countries of interest, individually.
Therefore, it is a highly recommended option when the objective is to protect the invention in a larger number of countries. Generally, everything starts with the patent process already existing here in Brazil and, within 12 months of the initial filing, the patent application can begin internationalization (with a claim for this Brazilian priority) from the PCT process.
It is also possible to make a direct applicant of the international application (without having a patent in Brazil) and, at the correct time, nationalize the application here through a Brazilian patent applicant (national phase).
From the initial filing (whether in Brazil, another country, or directly via PCT), there is a 30-month period in which the novelty is maintained. Thus, the invention can begin its nationalization process in each country, based on the individual patent application in each chosen territory.
So, what does PCT mean?
Advances in technology and the globalized economy have given rise to increasingly important chapters in patent registration. Large companies and small inventors have been very concerned about protecting their inventions in order to strengthen their business models and ensure legal protection. Situations in which powerful multinationals engage in legal battles to obtain the registration of a technology are common.
And the PCT is here to make the protection process easier. But what is it, after all? Well, the PCT (Patent Cooperation Treaty) is a multilateral agreement that makes it possible to extend the term of patent protection in a large number of countries simultaneously, through the filing of just one international application.
The WIPO (World Intellectual Property Organization) administers this Treaty. It was established on June 19, 1970, and allows the inventor much more time to decide where he or she wants to file his patent.
Some observations about the PCT should be highlighted:
Some countries are not members of the PCT, such as Bolivia, Paraguay, Uruguay and Argentina;
It is not possible to make a PCT for Industrial Design (ID) and Trademarks. Therefore, the treaty is only valid for Patents;
It is possible to execute PCT directly (without having filed a previous patent).
What is the purpose of the PCT and why is it so important?
The main objective of the PCT is to make it more economical and simpler to protect inventions when they are requested in different countries around the world. The treaty ends up increasing the deadline for the owner of the creation to choose the countries in which to register it, remembering that the countries must be members of the PCT. The system can be used when the inventor is not yet absolutely sure of the countries where he wants to have his creation protected.
Approximately 16 months after the earliest date, the owner receives a search on his creation. The result is prepared by international search authorities that are designated in the PCT protocol. Here in Brazil, examiners from INPI (National Institute of Industrial Property) are responsible for gathering information on what already exists today in the field of activity (technical field) of the invention created. This makes it possible to analyze the result in terms of investment returns and assess whether registration in a given country is actually advantageous and necessary for the company.
After 18 months, the application is published and, 30 months after the first filing, the countries where the holder wishes to obtain protection are chosen. It is worth noting that the patent process in the countries must follow the national procedures and legislation for registration, such as payment of annual fees, translation into the local language and response to possible requirements from examiners.
Thus, initially, the patent is guaranteed protection in the PCT member countries and, after 30 months from the earliest date, it must be registered nationally, from country to country.
When is PCT the best alternative?
The PCT is highly recommended and is the best option when a person or company wants to have a higher level of protection for their patent abroad. After all, it allows a very large number of countries to be covered (albeit temporarily), by extending the deadline for choosing the territories of interest. It is extremely easy, since the documentation is collected in a single process and everything is done simultaneously for numerous countries, and the application must be nationalized in each territory within 30 months of the earliest date.
How is the protection offered?
To understand international patent processes, it is essential to take into account some characteristics of their operation. In very basic terms, a patent effectively protects the invention in the country where it is granted.
Let’s think about a Brazilian creation patented by INPI-Brazil. In this way, anyone in France or the United States, for example, will be able to manufacture and sell the same product, if the patent is not requested in these countries.
However, the novelty required to patent a creation is required worldwide. Therefore, theoretically, no one will be able to protect the same product patented in Brazil in another country if it has already been published here, as it will lose its novelty and this must be verified by examiners in other territories.
What does the PCT process include?
See below the steps of the PCT process:
- Filing: If you file a patent today, you have 12 months to file in another country, claiming priority or you can file a direct PCT. If you are not sure where you want to protect, the best option is to file a direct PCT, which can be done in Portuguese, choosing INPI-Brazil as the search authority. The applicant files a single international application that meets all the formal requirements of the PCT, in a single language, paying a single set of fees;
- International search: after approximately 16 months (always counting from the earliest date), you will receive a search on your invention. Thus, by selecting INPI-Brazil as the International Search Authority (ISA), the result is made available in Portuguese, allowing you to check what already exists in your field of activity. Changes to the claims can be made in order to correct defects or obstacles mentioned in the search, which is for informational purposes and does not bind the analyses of examiners in each country;
- International publication: as soon as possible after the expiration of the 18-month period (counted from the earliest filing date), the content of your international application is published worldwide, i.e. international publication (WO) occurs;
- National phase: after 30 months from the earliest date, you can choose the countries of interest for the National Phase of the application: filing in each chosen country, always subject to national laws, following the procedures of each country for its registration (translation, examination, requirements (if applicable), payment of annual fees, approval and granting of the patent). In countries where the national phase is not carried out, your application will fall into the public domain, that is, anyone will be able to use and commercialize your invention without your authorization.
Personalized consultancy to guarantee international protection of the invention
Initially, obtaining a patent in other countries may even seem like a simple process. However, it is necessary to gather a series of documents and go through quite complex steps, and of course this takes a considerable amount of time. Therefore, without help to deal with all the bureaucracy, there is a risk that the invention will be registered first in another territory in the world.
So, to avoid this and ensure correct protection for the invention, the best solution is to hire a specialized company, such as VILAGE Marcas e Patentes, to identify the main needs and help with the steps until the invention is patented.
With this assistance, the process will be much cheaper, faster and easier, ensuring extra security for this stage. This way, you can stay focused on what really matters. So choose VILAGE!
Here, our commitment is to excellence in services, with experienced and specialized professionals to carry out all processes with total care and safety.
Because our focus is to guarantee personalized service to our customers, always considering each person’s needs.
Our services are all certified by BSI Brazil in the requirements for operating the Quality Management System in accordance with ISO 9001.
Frequently Asked Questions
In total, there are 153 countries that are part of the treaty, including Brazil. You can consult the list of all of them here.
