Understanding the History of Patent Harmonization ・ Part 3

The Patent Cooperation Treaty (PCT) 1)

The Patent Cooperation Treaty (PCT) was enacted in 1970 with the aim of reducing the burden on “foreign” patent applicants, who cannot be covered by the “Paris Convention,” which aims to protect intellectual property internationally.

This treaty has been discussed by representatives of each country since the time of BIRPI (Bureau Internationaux Reunis pour la Protection de la Prorpiete Intellectulle), the predecessor of WIPO.  As of 2021, the PCT has 153 member countries globally. Since the current number of UN member states is 196, this means that about 80% of the UN member states are members of the PCT.

The PCT reduces the burden on applicants for foreign applications by harmonizing formality matters, and at the same time aims to internationalize patent examinations in each country. Therefore, there are both public and private perspectives: 1: reducing the burden on the applicant and 2: reducing the burden on the Patent Office of each country. 

The PCT has been seeking the harmonization of patent examination practices in each country, and is planning to shift away from localism to globalism in the world of patents. The PCT is a milestone heading towards Patent Harmonization. However, please note that the meaning of Patent Harmonization is not to unify the patent law and practices in each country and establish “a world united in patent law”, rather simply to harmonize them in each country based on territorialism.  

That said, when using the PCT, for patent practitioners (patent attorneys / patent agents), whose most important issue is the protection of clients, in the framework of globalism aiming at “the harmonization and simplification of patent practices”, it is necessary to hold the attitudes of traditional localism in the patent practices of each country; specifically the questions or problems that hinder harmonization derived from various matters such as the differences of the legal systems of each country, the language used in patent examinations, the scope of documents for patent examinations, etc.that have been resolved, or are still unresolved in the PCT system.

These issues are addressed in the PCT system. For example the question of quality of ISRs(International Search Report) or of Translation Fees when entering into different national phases. The differences in examinations in each country, in particular the quality of ISRs, is still a major issue unsolved in the PCT system. This point will be described in detail later.

Apart from the actual evaluation of the PCT, it should be noted that if we are not fully aware of this perspective, we may not be able to fully protect our clients when using the PCT. From this point of view, we will look at the PCT system in future articles.


By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.