Difference Between Paris Convention and PCT

Working in the international economy means that certain rules, including intellectual
property laws, will be extended across nations. An inventor who wishes to protect his
invention across the world may protect it by filing a patent in each country or may file
an international patent application. The application for an international patent is
governed by two main international conventions.

Firstly, the Paris Convention on Industrial Property Protection governs every

international filing right. Parties to the Paris Convention can also form part of the
Patent Cooperation Treaty (PCT). The PCT allows inventors to file an international
patent application. Let us get to know more about the Paris Convention and the PCT.

Paris Convention
The Paris Convention was signed in Paris, France, on 20 March 1883. The World
Organization for Intellectual Property (WIPO) administers this convention. There
were several revisions in the convention in Brussels in 1900, at Washington in 1901,
at Hague in 1925, in London in 1934, at Lisbon in 1958, and in Stockholm in 1967.
There are over 170 Countries that are members of the Paris Convention.

The convention applies to industrial property such as trademarks, patents, utility

models, service marks, trade names, and industrial designs. Furthermore, it also
applies to appellations of origin, an indication of source, and repression of unfair
competition. It is one of the main instruments of international law for the protection of
industrial property. Thus, the countries to which this Convention applies shall
constitute a union for the protection of industrial property.

Apart from providing specific rules of substantive law, the Paris Convention
guarantees to each Member State a basic right called ‘the right to national treatment.
It also sets out another basic right known as ‘the right to priority.’

National Treatment
The Paris Convention provides that every Contracting State shall provide the same
protection as according to its nationals in respect of industrial property as to
nationals of the other Contracting State. Nationals of non-contracting states are
therefore entitled to national treatment under the Convention.

This principle, thus, prohibits two sets of rules for the protection of industrial property
– one for nationals and the others for foreigners. If a member state does not provide
any industrial property protection to its citizens, the Paris Convention states it does
not require to provide the same to foreigners either.

Right to Priority
The convention provides for the Right to Priority in the case of patents and utility
models, marks, and industrial designs. The right of priority means that, based on a
regular first application in one of the Contracting States, the applicant may, within a
certain period apply for protection in any of the other contracting states. The duration
is 12 months for patents and utility models and 6 months for industrial design and
marks. Besides, the Paris Convention also regards applications filed later in other
Contracting states as if they were filed on the date of the first application.

Let us look into the pros and cons of using the Paris Convention to protect our
Intellectual property rights.

Paris Convention – Pros:

1. The Paris Convention gives the broadest rights of trademarks, patents, utility
models, industrial design, geographical indication, and trade names to individuals
and firms.
2. One cannot refuse or terminate a patent on the ground that the patent has been
terminated or refused in another Country. Moreover, a country has no duty to
recognize the patent if it refuses to do so in any other way.
3. The convention allows a great deal of constitutional freedom for each country. It
also ensures fair treatment for nationals and foreigners.
4. The 12-month convention cycle helps the applicant to seek funding, perform
market research, and turn the concept into a commercial product. The convention
enables one to achieve all these with a single filing without causing a loss of rights in
other countries.
5. The Convention does not seek to bring national laws into force or create the
concept of reciprocity for national treatment.

Paris Convention – Cons:

1. At times foreigners acquire patents to gain monopolies rather than develop
inventions locally. This is the focal point of the Convention’s struggle.
2. The dispute over import monopolies in the Paris Convention was limited to Article
5 of the Convention on the misuse of patents.
3. The Convention is lacking in the effort to adequately analyze where the public
interest lies. It also doesn’t efficiently address the production of technology gifts
beyond the market principle. Moreover, the convention doesn’t analyse how the
market principle itself can be changed.

Patent Cooperation Treaty

The Patent Cooperation Treaty is a special agreement within the scope of the Paris
Convention. A State must become a member of the Paris Convention before
becoming a member of the PCT. The PCT aims to simplify and make the process for
securing patents more efficient. It was revised in 1979 and updated in 1984. The
PCT enables one to obtain patent protection for an invention simultaneously in a
large number of countries through an international patent application.
Any person who is a national or resident of a Contracting State can apply an
application to the national patent office or the International Bureau of WIPO in
Geneva. The PCT shall prescribe the specific specifications to which any
international application may adhere. Applications must join the national process in
any country or region of interest 30 months (31 months in certain countries) after the
priority date of the PCT application (or the PCT application itself if the priority is not
set out in the Paris Convention).

Patent Cooperation Treaty – Pros:

1. Inventors can file a single international phase patent application to gain protection
in 117 countries that are PCT signatories simultaneously.
2. The formality criteria, the international search, and preliminary review reports, as
well as centralized international publications by the PCT system, are standardized.
3. The PCT contributes to scientific development advancement.
4. It protects innovations optimally by law.
5. It simplifies and makes innovations more economical.
6. It improves the status of the country in the area of intellectual property worldwide.
7. The PCT enables efficient patent portfolio management.
8. Assess and develop incentives to preserve an innovation before it incurs major
costs in foreign countries.

Patent Cooperation Treaty – Cons:

1. High charges for filing fees.
2. PCT is difficult because the formal requirements of its Member States are
complex.
3. PCT time limits can also be expensive.
4. It takes a longer duration to obtain patents through PCT.

There are both benefits and drawbacks to the issuance of a patent application.
Hence, one should consider the interests and circumstances of the applicant.
Although the PCT has advantages, the initial charges are relatively high. Applicants
with a small budget and an interest in only a limited number of countries may,
therefore, prefer to send direct applications to the Paris Convention rather than to
send a PCT application. One can make three or more requests to the Paris
Convention at the cost of the PCT submission, in particular, if there are no
translations involved.

The intellectual property world offers several scopes for the protection of inventions
irrespective of borders. Hence, it depends on the inventors to make the best use of
the opportunities to protect their inventions.

Paris Convention For The Protection Of Industrial Property

Paris Convention for the Protection of Industrial Property
 This convention facilitates in seeking protection for various types of industrial property in
countries that are signatories to this convention. The date of filing the first application in
a convention country (e.g., India) may be claimed as the priority date in other convention
countries if the application for protection in those countries is filed within 6 or 12 months
of filing the first application (12 months for patents; 6 months for industrial designs and
marks). The main advantage is that when an applicant desires protection in several
countries, he is not required to present all his applications at the same time in those
countries, but has an additional 6 or 12 months to decide in which countries to seek
protection.

Subject Matter of the Paris Convention:

The Paris Convention applies to industrial property, including patents, marks, industrial
designs, utility models, trade names, geographical indications and the repression of
unfair competition.

Main Provisions of the Paris Convention:

The substantive provisions fall into three main categories: national treatment, right of
priority and common rules.

 National treatment: Each contracting State must grant the same protection to nationals of the
other contracting States as it grants to its own nationals. Nationals of non-contracting States are
also entitled to national treatment if they are domiciled or have a real and effective industrial or
commercial establishment in a contracting State.
 Right of priority: On the basis of a regular first application filed in one of the contracting States,
the applicant may, within a certain period of time (12 months for patents; 6 months for industrial
designs and marks), apply for protection in any of the other contracting States; these later
applications will be regarded as if they had been filed on the same day as the first application, i.e.,
the later application will have priority over applications which may have been filed during the said
period of time by other persons for the same invention, mark or industrial design.
 Common rules: Certain rules which all the contracting States must follow. Some of the important
rules are as follows:
 Independence of patents: Patents granted in different contracting States for the same invention
are independent of each other - the granting of a patent in one contracting State does not oblige
the other contracting States to grant a patent; a patent cannot be refused, annulled or terminated
in any contracting State on the ground that it has been refused or annulled or has terminated in
any other contracting State.
 Compulsory license for patents: legislative measures providing for the grant of compulsory
licenses must have certain limitations. For example, a request for compulsory license based on
failure to work the patented invention may be filed only after 3-4 years of failure to work or
insufficient working of the patented invention and the request must be refused if the patentee
gives legitimate reasons to justify his inaction.
 Marks: no application for the registration of a mark filed by a national of a contracting State may
be refused, nor may a registration be invalidated, on the ground that filing, registration or renewal
has not been effected in the country of origin.
 Industrial Designs: must be protected in each contracting State, and protection may not be
forfeited on the ground that the articles incorporating the design are not manufactured in that
State.
 Trade Names: Protection must be granted to trade names in each contracting State without the
obligation of filing or registration.
 Indications of Source: Measures must be taken by each contracting State against direct or
indirect use of a false indication of the source of the goods or the identity of the producer,
manufacturer or trader.
 Unfair Competition: Each contracting State must provide for effective protection against unfair
competition.

What is Patent
Cooperation Treaty (PCT):
An Explainer
Editors - Paruli Upadhyaya
The Patent Cooperation Treaty (PCT) came into existence in the
1970s to provide economical and streamlined means for filing of
patent application in several countries. With the scope and value
of patent protection increasing over time, the need for such a
treaty has only been validated. However, as businesses move to
seek worldwide patent protection under PCT, the pros and cons
of the treaty have also surfaced.

Table of Contents

 What is Patent Cooperation Treaty?

 Advantages of the Patent Cooperation Treaty (PCT)
 Disadvantages of Patent Cooperation Treaty (PCT)
 Conclusion

What is Patent Cooperation

Treaty?
The Patent Cooperation Treaty (PCT) is an international IP
agreement that provides patent protection in several countries
through the filing of a single common application. The treaty,
governed by the World Intellectual Property Organization
(WIPO), has more than 150 nations as signatories, who are also
known as PCT Contracting States.
Filing patent applications under PCT implies securing legal
protection for an invention under patent law in more than 150
countries at once. Major global corporations, research institutes
and universities seek patent protection via PCT. It safeguards
applicants against accidental errors which are far more likely to
occur if a separate application is filed in every country of
interest.

Advantages of the Patent

Cooperation Treaty (PCT)
Emerging as the cornerstone of the international patent system,
PCT simplifies the managing and processing of patent
applications. The benefits of the treaty include:

 Parallel Patent Protection

When an applicant files for patent in the US, it’s likely to
preclude the chances of obtaining patent protection in other
countries. That’s where the role of PCT comes in. The treaty
allows businesses to have simultaneous protection under
patent law in the PCT contracting States, including the US.
 Comprehensive International Patent Search
When one files a patent application with WIPO under PCT, the
organization conducts a global patent search that enables
applicants to find out whether the invention can be patented
across the world. This knowledge can significantly affect the very
decision of patenting the invention itself.

For instance, if a patent is found to be unpatentable after

disclosure in a PCT application, it can prompt a decision to
withdraw the application, preventing the cost of national phase
filing. Hence, it is also an efficient method of managing risk.

 Time-effective Application Process

Filing separate patent applications in all the PCT Contracting
States would require amending the application according to the
rules and regulations of each member country. The process will
not only be daunting but also time-consuming. The treaty
accelerates all your patent applications globally. Some of the
PCT Contracting States also have PCT-Patent Prosecution
Highway Agreements that enable even faster processing.

 Strong Grounds for Patenting Decision

Once an applicant files a patent application under PCT, WIPO
sends a global patent search report and an opinion on the
patentability of the product – both make obtaining grant of a
patent in selected countries considerably easier. The information
also plays a critical role in assessing the prospects of acquiring a
patent.

 Opportunity to amend applications

Applicants get an opportunity to amend a PCT application before
entering national phase countries. Amendments can be made on
a voluntary basis or in order to address the search and
examination report which is issued by PCT.

Disadvantages of Patent
Cooperation Treaty (PCT)
On the other side of the coin, PCT has certain disadvantages too.
However, its benefits surpass the negligible limitations. Some of
the drawbacks of the treaty are:

 Limited Patent Coverage

You can obtain only utility patents through patent applications
under the PCT. You can’t patent a design through this process.
The process also creates examination delays and it takes more
time to acquire patent via PCT route. But PCT gives you
additional 18/19 months to select the countries of interest.

 Costlier Patent Process

The PCT also makes the patent process a bit costlier as it
requires an applicant to prosecute the application separately in
each country. It also costs attorney fees in international phase.
However, the process can provide favorable and cost-effective
solutions such as streamlined prosecutions. However, PCT fee
reductions are available when the PCT application is filed
electronically or the applicants belonging to developing countries
get 90% reduction in the official filing fee.

Conclusion
Amendments are made every year to simplify the PCT system
and to make sure it remains aligned with the interests of the
applicants and the national patent offices in respective countries.
The treaty brings together nations, motivates inventors, and
enables the spread of technological advancement to different
corners of the world.

Overview on The Patent

Cooperation Treaty (PCT)
Introduction
The Patent Cooperation Treaty (PCT) provides us with an overview of an
international treaty which is duly administered by the World Intellectual
Property Organization (WIPO). The Patent Cooperation Treaty (PCT) is an
international treaty with more than 148 Contracting States. It is administered
by the World Intellectual Property Organization.(WIPO).The PCT is an
international treaty which provides a system for filing a patent application
and allow us to obtain patents in multiple countries around the world on the
basis of a single patent application. As PCT simplifies the procedure for
obtaining Patent protection in many countries, making it more efficient and
economical for: a) Users of the patent system i.e an applicant/(s) and
inventors b) National Offices. The PCT simplifies the patent filing process for
applicant and the ultimate decision to grant a patent vests exclusively with
each national or regional Patent Office. A single PCT application has the same
legal effect as a national Patent application in each of the PCT Contracting
States. Without the PCT, we would have to file a separate patent application
in each country separately and independently. PCT save applicant time,
effort and expense of preparing separate applications in various languages
and file it in different signatories states. Patent Cooperation Treaty- file an
application under the PCT, directly or within the 12-month period as provided
for by the Paris Convention from the filing date of a first application, which is
valid in all Contracting States of the PCT.

Need for Introducing PCT

PCT PROVIDES USERS WITH A

WORLDWIDE SYSTEM FOR THE
SIMPLIFIED AND EFFECTIVE FILING
OF PATENT APPLICATIONS,
 To bring the world within reach.
 Removes major costs and provides users with additional time to
consider their various Patent granting options.
 Provides a strong basis to the user for Patenting decisions.
 Is effectively used by the world’s major corporations, universities
and research institutions when they seek international patent
protection.

Basic Features of PCT System

1. Formal examination done by one office.
2. Retrieval is carried out by one office.
3. International publication done by one office.
4. Examination and authorization finished by national office.
5. Single application with legal effect in all PCT countries.
6. 148 countries and 4 regional patent systems.
PCT Advantages

THE PCT, AS AN AID OF THE

INTERNATIONAL PATENT SYSTEM,
PROVIDES A WORLDWIDE SYSTEM
FOR SIMPLIFIED FILING AND
PROCESSING OF PATENT
APPLICATIONS WHICH HELPS IN,
 A single application in single language filed in a single country called
the international application.
 Provides a strong basis for patenting decisions to the users.
 Harmonizes formal requirements.
 Used by the world’s major corporations, universities and research
institutions when they seek international patent protection.
 This single application has the effect of filing simultaneously in
different countries (designated countries).
 Protects applicant from certain inadvertent errors.
 Evolves to meet user needs.

PCT Challenges
1. Improving the quality of PCT international phase work products.
2. Building trust between Patent offices, so that duplication of
application in international phase and national phase processing can
be reduced.
3. Language issues faced by most countries:

 Helping developing countries benefit from the PCT.

 Making PCT accessible to applicants of all types from all Contracting
States.

4. Helping PCT users stay abreast of new developments and strategies