PATENT COORPERATION TREATY

WHAT

The Patent Cooperation Treaty or PCT is an agreement for international cooperation in the field of patents; which established a procedure for the filing and processing of a single application for a patent which has legal effect in the countries which are Treaty (PCT) members. Malaysia became a Treaty (PCT) member on 1st May 2006 and as of 1st August 2006, applications under the PCT worldwide are allowed to designate Malaysia as a country for which patent (in Malaysia) can be granted by way of PCT route as contrasted with the conventional national route.

WHY

The Advantage

Deferment
The PCT system allows a single international patent application to be filed in the English language in Malaysia and permits deferment (postponement) of the filing of separate national application (application in any one, more or all of the PCT member nations) for a period of 20 to 30 months, from the priority date of the international application.

Under the normal national patent filing system, an applicant usually have only up to 12 months from the priority date of the application to complete filing in the various countries desired for patent protection for purposes of preservation of novelty. Worldwide novelty is an essential criterion for a patent to be granted. The priority date means the date of first filing of the patent application in any country.

This enabled delay may offer a significant advantage for patent applicants by easing their economic burden and loan (having to pay for filing within 12 months) as well as providing the applicant with facilities to make a sound decision on proceeding with seeking protection in other countries and the country of choice.

HOW

The Procedure

The PCT application (or international patent application) can be filed by any national (citizen) or resident of a PCT member country. For a Malaysian or a resident of Malaysia the PCT application can be filed with the Malaysian Patent Registration Office, which will act as a PCT receiving Office.

Alternatively, citizens and residents of all PCT member countries can opt to file a PCT application with the International Bureau of the World Intellectual Property Organization (WIPO) as a PCT receiving Office.

International Phase
After receiving the PCT application (which must be filed in triplicate) the receiving office will accord an international filing date to the application and then send a record copy of the International Application to the International Bureau of WIPO and another search copy to the International Security Authority (ISA).

The PCT application is subjected to an international search with the objective of discovering relevant “prior art”. The international search is conducted by experienced patent offices that have been specially appointed to carry out international searches to ensure a high quality search of the patent document.
Upon searching by the ISA, the International Search Report (ISR) shall be established within 3 months from the receipt of the search copy by the ISA or 9 months from the priority date, whichever time expires later. The International Bureau includes the search report in the International (PCT) application and sends a copy to the designated offices.
It contains citation of documents of relevant prior art which will enable the applicant to gauge his chances of obtaining a patent in or for the countries designated in the PCT application, and to decide whether it is worthwhile to continue to seek protection or his invention in the designated states. 
National Phase
If the ISR is favourable (where the citations of prior art would appear not to prevent grant of a patent) it will assist the applicant in the subsequent processing and prosecution of the application before the designated offices at the National Phase.
If the applicant sees no likelihood of obtaining a patent in the elected states, he can either withdraw his application or do nothing. The applicant have in such a case saved himself great expense,  namely the costs involved in filing separate nation, application and translation for the national offices, he has not paid fees to those offices and he has not appointed local agents.
Once the national processing starts, the normal national procedure applies. In Malaysia (if elected) the applicant of the international applications enters the national phase there and further prosecution will be subject to the patent laws of Malaysia.

Language

The language in which as international application can be filed depends upon the requirement of the Receiving Office with which the application is filed and of the International Searching Authority which is to carry out the international search. The main language in which PCT application may be filed are Chinese, English, French, German, Japanese, Russian and Spanish.
Other languages also accepted are Danish, Dutch, Finnish, Norwegian and Swedish. In Malaysia (as a Receiving Office) the required or preferred language is English.