Why and How the PCT is Used - Advantages and Problems

Michael J Caine

Convenor - International Patents Committee

The Institute of Patent and Trade Mark

Attorneys of Australia

ADVANTAGES

• Single filing procedure satisfies Convention deadline in many countries

• Costs are deferred• Decision on countries deferred• ISR and IPER assist decision to proceed• Flexibility within IPE procedure• Can be pursued in parallel to national

protection

PROBLEMS

• No top-up searching • No opportunity to obtain search reports

from different ISAs• No opportunity to formally contest WO of

ISA• No dialogue during IPE • Lack of incentive to file Demand• Increased workload for national offices

PROBLEMS cont

• Lack of quality control over search and examination

• Lack of central database for national phase entry problem for third parties

• Only provides for filing single specification

FUTURE

• International patent community should work towards changes which make the PCT– more user friendly for applicants– more useful for national offices– less problematic for third parties

Thank you

Michael J Caine

Convenor - International Patents Committee

The Institute of Patent and Trade Mark

Attorneys of Australia