In this era of globalisation, it is desirable to extend the protection of IP rights, including patents, designs, copyrights and trademarks to different regions of the world. To achieve this for patents, the Patent Cooperation Treaty (PCT), an international patent law treaty concluded in 1970, assists patent applicants to secure protection for their inventions in multiple jurisdictions.
The PCT enables applicants to seek patent protection consecutively in a number of contracting states at the same time by filing an international application rather than several regional applications. It is a centralised filing system and the granting of a patent remains under the control of the contracting state's national or regional patent office. The PCT offers a strong platform for international patent applications and a cost-effective application process.
Pakistan plans to become a contracting PCT member in 2020. This article examines the PCT in this context.
The PCT offers the following significant features:
- Each international application is subject to an international search, which helps applicants to calculate their chances of obtaining patent registration in different countries.
- The World Intellectual Property Organisation's international bureau publishes PCT applications to disclose them to the general public.
- Applicants can request an international preliminary report to assess whether their invention meets the criteria of patentability.
- The PCT provides a single application with legal effect in all participating countries.
The PCT may open new avenues for business opportunities in various countries. However, such coverage may not be enough to attract applicants to file a patent in Pakistan, unless strong protection and significant market access is available, which remains a matter of concern for foreign applicants.
Following Pakistan's ratification of the PCT, the types of activity carried out by and workload of patent attorneys will not change. However, given the advantages of PCT filing, most conventional and non-conventional application filings by foreign applicants will likely be diverted towards PCT filing. Since international applications can be filed at any PCT receiving offices, foreign applicants may prefer to file applications at their local national office. Consequently, patent attorneys in Pakistan will no longer have to file patent applications and will be unable to earn a fee for patent filing in Pakistan for applicants from a PCT contracting state. This may be a concern for patent attorneys in Pakistan and could also affect the inflow of foreign exchange generated by such filing activity.
Following the PCT's adoption, Pakistani nationals will be able to use the system and enjoy its benefits of wider protection. However, the reality is that not many parties in Pakistan file patent applications. It will be interesting to see whether patent owners will be interested in obtaining protection for their inventions overseas.
The PCT provides the best option for obtaining an international patent. Pakistan plans to accede to the Madrid Protocol in 2019 and become a contracting member of the PCT in 2020. In this regard, the Intellectual Property Organisation of Pakistan (IPO) is in the process of updating its IP laws, including the Patent Ordinance 2000, to incorporate the relevant PCT provisions.
The IPO has also started training examiners, senior examiners and clerks to facilitate PCT filings by Pakistani applicants. This will hopefully increase patent filings and help to secure new inventions in Pakistan.
For further information on this topic please contact Seema S Mansoor or Erum Rasheed at Vellani & Vellani by telephone (+92 21 3580 1000) or email ([email protected] or [email protected]). The Vellani & Vellani website can be accessed at www.vellani.com.
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