PCT–Patent Cooperation Treaty

Under this WIPO-administered treaty, nationals or residents of a contracting state file a single patent application, called an “international” application, with their national patent office or with WIPO as a receiving office. This automatically lodges the application for patent protection in all Contracting Parties of the PCT.

The treaty provides a longer period of time, 30 months, before applicants must commit themselves to undertake the expenses of translation, national filing fees, and prosecution in every country in which they want protection. By providing applicants with more time and information to evaluate the strength of their potential patent and to determine marketing plans, the 30-month period allows applicants to be more selective as to the countries in which they will file. This is a major improvement over the 12-month priority period provided under the Paris Convention for patent applicants.

Under the PCT, WIPO publishes the “international application,” together with a nonbinding indication as to the potential patentability of the invention. This nonbinding indication is a preliminary search and/or examination by an “International Authority,” one of 15 patent offices designated by WIPO that currently meet the treaty’s minimum staffing and documentation requirements. The nonbinding indication helps applicants decide whether to proceed with their patent applications in national or regional offices. Patent offices also benefit from these nonbinding indications of patentability when deciding whether to grant national or regional patents based upon PCT applications. Earlier search reports identify relevant documents that help patent offices to conserve resources in the examination process and to improve the quality of examination.

WIPO: Software and Business Methods Patents.

“Computer technology plays an increasingly important role in our society today. It penetrates more and more areas of our life, not only in business environments but also in daily surroundings. A computer cannot operate without instructions. These instructions, so-called computer programs or software, may be incorporated in the computer or apparatus, but are often created, reproduced and distributed on media such as CD-ROMs or transmitted on-line.

Once created, it is often possible to reproduce software easily at very low cost. Thus, without appropriate protection against unauthorized copying and use, producers of software may not be able to recoup their investments. The unique nature of software is that it performs various functions through expressions written in computer language. Although copyright protects “literal expressions” of software, it does not protect the “concept” behind the software, which often is a core part of its commercial value. Since such concepts behind the software often provide technical functions such as controlling machines or processing data, program developers started seeking protection of software through the patent system.

However, due to the special characteristics of software innovation, some people consider that patent protection of software would inhibit competition in this field. It is said that software innovation typically involves cumulative, sequential development and re-use of others’ work, and that the need to preserve interoperability between programs, systems and network components does not fit with the mechanisms of the patent system because the range of options available to the second comer may be constrained.

In recent years, another issue arose, namely the question of the patentability of business methods. Traditionally, business methods have been either in the public domain or protected under trade secret law. Today, however, information technology offers possibilities of applying new business models, using information technology as a tool for processing and transmitting various data and for communication. The Internet has provided new prospects of doing business on-line. Due to high economic stakes put on those new business methods and the expansion of e-commerce in our society, the debate on the opportunity of patenting business methods has continued at both the national and international levels.”

See http://www.wipo.int/patent-law/en/developments/software.html.

PCT: Patent Cooperation Treaty.

The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of many countries by filing an “international” patent application.  This application may be filed by anyone who is a national or resident of a 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 international application is then subjected to what is called an “international search.” That search is carried out by one of the major patent offices appointed by the PCT Assembly as an International Searching Authority (ISA). The said search results in an “international search report,” that is, a listing of the citations of such published documents that might affect the patentability of the invention claimed in the international application.

Simultaneously, the ISA prepares a written opinion on patentability.  Based on the international search report and the written opinion, the applicant may make further decisions.