If you are seeking international patent protection, The Patent Cooperation Treaty (PCT) offers a convenient and efficient solution for you.
The Patent Cooperation Treaty (PCT) established in 1970, this international cooperation agreement aims to simplify the patent filing process, reduce burdensome procedures, and minimize costs for applicants looking to secure their inventions in multiple countries. By leveraging the PCT system, businesses can file a single international application and enjoy seamless protection across over 150 member countries.
Thailand, as the 142nd member to join in 2009, has embraced the benefits of the PCT, having successfully filed over 900 patent applications worldwide to date.
There is The Advantages of Filing through the PCT System:
1. Valuable Insights from International Search
By utilizing the PCT system, every application undergoes a comprehensive search conducted by an international searching authority (ISA). This search evaluates crucial patent granting conditions like novelty, inventive step, and industrial applicability. The search results provide applicants with valuable information, empowering them to make informed decisions regarding further national filings.
2. Publication in the International Patent Database
Filing through the PCT system ensures that your application is published in the international patent database, creating a valuable resource for applicants seeking patent protection in multiple countries. These published documents can be utilized as supporting materials during the filing process in individual countries. Moreover, the international exposure of your PCT application opens doors to potential investors worldwide, paving the way for future business opportunities.
3. Extended Decision Period
Unlike traditional direct filing procedures, which impose a 12-month deadline for foreign patent filings from the initial application date, the PCT system offers an extended decision period. By opting for PCT filing, businesses gain an additional 18 months, totaling 30-31 months from the first filing date. This extended period is beneficial for businesses that need time to find appropriate market or for smaller businesses with limited financial resources to seek foreign protection within the initial 12 months.
The process of filing a PCT application composed of 2 key phases:
1. International Phase
During this phase, governed by the regulations of the World Intellectual Property Organization (WIPO), several actions take place on an international scale. These actions include filing the international application, conducting an international search conducted by an international searching authority, and publishing the application in the international patent database. The international phase typically spans around 16-18 months from the filing date of the PCT application.
2. National Phase
The national phase involves leveraging the search results and published PCT application from the international phase to enter specific target countries. Each country has its unique set of rules and regulations, and the time required for patent granting can range from 2 to 5 years, depending on the policies of the respective national intellectual property offices.
Frequently Q&A regarding PCT system:
Question: Is PCT a system for registering patents?
Answer: The PCT system is not a system for registering patents, but rather a mechanism that facilitates the process of seeking patent protection in each country. This is because each country’s intellectual property office has its own regulations and criteria for patent registration.
Question: Can we choose the international search authority ourselves?
Answer: For PCT applications filed with the receiving office of Thailand, the applicants can choose the international search authority from the 7 designated offices specified by the Department of Intellectual Property of Thailand. These offices include the intellectual property offices of China, South Korea, Japan, Singapore, Australia, Europe, and the United States.
Question: Which international search authority should we choose to examine our application effectively?
Answer: Each country’s international search authority has different fee structures. Applicants can choose an organization that is suitable for their budget. However, if budget considerations are not the main factor, selecting the search authority from the same country where you intend to file the patent application tends to result in a shorter processing time.
Question: “Which types of patents can be filed through the PCT system?”
Answer: The PCT system covers only inventions and utility models. The choice of seeking protection as a patent or utility model will be made during the national phase. The same PCT application may seek patent protection in some countries and utility model protection in others. It should be noted that some countries may not provide utility model protection under their intellectual property systems. Therefore, it is advisable to find out or consult with an agent before filing. For design patent or other types of intellectual property rights, they are not covered under the PCT system.
Question: Is it necessary to file an application in Thailand before filing a PCT application?
Answer: It is not necessary to file an application in Thailand before filing a PCT application. Applicants can directly file a PCT application during the international phase without first filing in Thailand. Subsequently, if the applicant determines that Thailand is not a primary target for market entry, they can choose to file a national application specifically in the countries of interest.
Question: Can a PCT application be filed by oneself?
Answer: Applicants can file a PCT application themselves at the Department of Intellectual Property of Thailand or through the ePCT system. However, since filing a PCT application involves specific regulations, it is common for companies, entrepreneurs, and inventors seeking patent protection to use patent agents. Using a patent agent helps reduce the chances of receiving an office action that requires amendments, which can result in time-consuming processes and additional costs. Patent agents assist in preparing documents to meet the requirements, coordinating translation according to patent forms, monitoring the application, providing advice, and facilitating the process both internationally and nationally.
For patent consultancy service, please contact : [email protected] or +66 2-011-7161 extension 301-304. Alternatively, you can also reach us via Line at @idgthailand.