Patents – PCT: Considerations at the time of establishing strategies in LATAM

Patents – PCT: Considerations at the time of establishing strategies in LATAM

By Rosario Mauro.

This article refers to the countries of the region that did not subscribe to the PCT Treaty, the consequences for applicants and some important considerations when establishing the patent strategy in LATAM.

As known, the main goal of the Patent Cooperation Treaty (PCT) is to facilitate the filing of patent applications internationally in all member states.

The PCT system allows applicants to extend the deadlines to file the national phases for up to 18/19 additional months to the Paris Convention, already counting with an international search and a preliminary report that allows them to proceed with the national phase filings with greater certainty about the feasibility of their invention, specially considering the important investment that it implies.

Currently, the PCT has 156 Contracting States. Within the region, Argentina, Bolivia, Paraguay, Uruguay and Venezuela did not sign the agreement, so it is necessary to consider the 12 month term established in the Paris Convention to obtain protection.

The fact that these countries did not adhere to the Treaty not only excludes them from its benefits, but many times applicants from countries that are indeed members of the PCT Treaty, find it impossible to protect their inventions when wanting to submit an application after the 12 months term has expired for not complying with the requirement of absolute novelty.

For this reason, it is necessary that when establishing the international strategy, applicants consider the following:

  • Argentina, Bolivia, Paraguay, Uruguay and Venezuela require absolute novelty. Once the 12 months term has passed since the first filing, it is not possible to claim priority. Also, if the PCT application was published, it is no longer possible to obtain protection.

• In the event that the 12 months term has expired and the PCT application has not been disclosed or published, it is possible to file the application without claiming priority, but bearing in mind that the date that will be taken into account when analyzing the novelty will be the local filing date.

• In all cases, a PCT application can serve as priority if the application is filed within 12 months from the filing of the PCT.

In the case of Argentina, definitive accession to the Treaty has been under discussion for many years. The PCT ratification bill passed to the National Congress in 1998, but the House of representatives has not considered it yet. In our experience, the PCT system is beneficial for local and foreign applicants and we hope that the few countries not bound by the PCT, join soon to the list of contracting states.

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