Gerardo Miguel Lopez Cisneros Intellectual Property Law Blog on Lawyers.com

The traditional patent system all owners of an invention, must apply for an application in each country which desire to obtain the protection, a year after the priority date. Such application has to be translated into the language of each desired country and of course to pay the corresponding fees, without any certainty of a positive result. Many times, the applicants have to deal with the negative results after three or four years and after having made an unnecessary inversion.

The Patent Cooperation Treaty, most known as PCT, emerged by the necessity to improve said traditional patent system and in order to help the inventors and of course all the applicants which apply for a patent protection, to have better results.

The PCT is a tool for knowing if a patent application has the possibility to be protected or not, the same comprises two phases, the international phase and the national phase.

The international phase, starts at the moment of filing an international application, which must be filed within the 12 months after priority date or the same can be filed without claiming priority. The PCT has two Chapters.

Chapter I comprises the International Search Report and due to the EISPE, it must be done a Preliminary Examination Report on Patentability. At the moment of filing the international phase, it must be paid the fees for the International Search Report and to choose an Authority of the International Search Report, due to the fact that not all the Patent Offices have the faculties to act as Authority of the International Search Report. The most known Authorities are the USPTO, the EPO, and the Japan Patent Office. For Mexico, we have two options, the USPTO or the Spanish Patent Office for the language. The International Search Report will provide the information about the possible prior art of a new patent application and issues the Written Opinion or the International Preliminary Examination Report on Patentability. This report will provide information about the novelty, the inventive step and the industrial applicability, but this is not a deep examination and there is no possibility to amend the application.

If the applicant desires to have a deep examination, the Chapter II has to be applied. With the issuance of an International Preliminary Examination Report with the opportunity to interchange points of view with the examiner in the case of having a negative result in the same and the opportunity to amend the specification, the claims or the drawings.

The International Application is not a formal application, so it will not be an International Patent. In order to have the protection of a patent application, the applicants must start the national phase. The national phase could be entered at any moment after having filed the international application, but there are time limits to file them, for example in Mexico the time limit is 30 months after priority date, but there are countries in which the deadline line is between 31 or even 34 months, for example in Bosnia and Herzegovina which deadline is 34 months.

Even though the PCT is a tool for obtaining the protection of a patent, all the Patent Offices have the independency of taking into account the International Preliminary Examination Report or not.

WORLDWIDE PATENT ACTIVITY INCREASED BY 4.9% BETWEEN 2005 AND 2006, MOST OF THIS REPRESENT AN INCREASED FILING IN CHINA, THE REPUBLIC OF KOREA AND THE USA.

The total number of applications filed across the world in 2006 is estimated to be 1.76 million, representing a 4.9% increase from 2005.

Taking into account the statistics, we have noticed that the origin of most of the PCT applications are from a small group of countries, this means, it is not surprising that the leader countries are the same almost all years, like Germany, USA, Japan, but it is necessary to mention the increase in this field of countries like China and Republic of Korea, which are betting for the innovation and developing of new technology.

There has been an increasing in the level of patenting activity in the emerging countries; however, it is important to mention that the majority of those new patent applications came from the national phase of a PCT, which is the case of our country. Just as information, we can tell that on 2005, the number of applications filed at the IMPI was more or less between 13,000 and 15,000 applications and the number of national phases was 11,753 just for taking into account the importance of the PCT in the national system of protecting patents.

Mexico is part of the PCT since January 1^st, 1995 and nowadays there is no doubt about the advantages of filing national phase in Mexico, continuing with the statistics, on 2005, there were more or less 6,000 patents allowed, this means that IMPI is taking the advantages of the PCT as a tool for accelerating the examination of the patent applications.

Another advantage of the national phase in Mexico is that many of the requirements which have to be complied with in the traditional patent system are omitted since they have been already complied with during the international phase, for example, it is not necessary to file the certified copy of the Priority document or the Inventor’s Assignment as well. If any change have been made during the international phase, with the PCT/IB/306 Form is sufficient for proving the same and there is no need to obtain certified and legalized documents, unless said change is made after the international phase has been ended.

For all these reasons, it is important and recommendable to determine which of the patent system is better for your needs, and we confirm you that we will be here to help you whatever you choose.

REMARK: Statistics and some information provide herein, has been obtained by the WIPO website.