Updated: Aug 9, 2020
PCT stands for 'Patent Cooperation Treaty' and the applications filed under this Treaty are called PCT applications. However, Convention applications are those applications filed under Paris Convention for Protection of Industrial Property. The similarity between the two applications is that both of them are filed for patenting an invention in foreign nations.
What is the difference between PCT application and Paris Convention application?
Paris Convention predates the Patent Cooperation Treaty. The Paris Convention allows inventors to first file an application for registration of invention in their home country. This date of application would be considered as priority date and would set off a period of 12 months within which individual applications have to be made to the countries where the applicant decides to patent his invention. Priority date would be advantageous to the examination process, especially as a measurement for the test of prior art.
Patent Cooperation Treaty provides for a more centralised and universal process, but is time consuming and expensive. A PCT application is made to the receiving office situated in the home country, this receiving office will forward the application made to the International Searching Authority (ISA). The ISA will submit a search report along with a written report within 4 months to World Intellectual Property Organisation (WIPO) for publication of invention in PatentScope (WIPO database) within 2 months of such submission. The International Bureau will request for any additional examination or supplementary search in accordance with the outcome of the publication within 4 months of publication. The patent will finally enter the national phase of registration after a maximum of 30-31 months. Paris Convention mainly concentrated on providing priority date so as to facilitate international patenting of inventions, whereas PCT concentrates more towards centralised process for international registration of patent.
Which of the two is better?
If a Conventional application is filed, then the applicant has to personally file separate applications in all the countries he deems fit; during which she will incur the cost of application, translation, procedural costs and local agent’s cost for each of the countries that he chooses. Whereas, if a PCT application is filed, the applicant would have to enter into national phase, which is similar to filing applications in the national patent offices, but is much simpler due to the process followed internationally previous to such application.
Conventional application allows the inventor to claim that his invention was disclosed before the application was made in a foreign country. The process for examination differs from country to country. When PCT application is filed, the examination and search process is carried out by an international authority and hence the procedure followed is uniform; once the publication and objections are dealt with, the national phase starts, which results in entering of invention details into local database of the country, usually based on the search report of the international body.
Paris Convention provides a window of 12 months for the inventor to file applications in different countries and additional to that the grant would depend on each of the country’s procedure. PCT provides a window of 30-31 months for the whole process, where the applicant could ascertain the commercial value of the invention and decide.
Applicants, who want their inventions to be registered in only few foreign states may apply through Conventional Applications as up-front cost of filing a PCT is higher. Further, persons who require their invention to be registered relatively faster could avail Conventional Applications as opposed to PCT which takes about 30-31 months. Conventional Applications could also cause inordinate delay as domestic laws differ for each country.
In conclusion, PCT and Conventional applications are two methods for availing international patent for invention. Conventional application can only be used for the purpose of fixing priority date, whereas PCT application allows for international examination and search of invention applied for registration. PCT application can also be filed after filing a Conventional application within 12 months. However, these applications have to be chosen in accordance with the interests of the applicant.