What it’s like if your country joins the PCT

The other day I was teaching the international-filing session of the AIPLA’s twentieth annual Patent Prosecution Boot Camp.  (By the way I highly recommend this boot camp for anyone who is just getting started in patent prosecution.)  One of the 110 or so attendees at the boot camp was a very nice fellow named Emilio Berkenwald who is with a patent firm in Argentina.  Well, I did what I always do when I meet someone from Argentina — I said I sure hoped his country would soon join the Patent Cooperation Treaty!

This reminded me, however, of the perspective that a patent practitioner might have when contemplating one’s country possibly joining the PCT.  The perspective might not be completely favorable, as I will discuss.

For a patent practitioner in a country that has not yet joined the PCT, such as Argentina, the situation is easy to characterize.  The situation is that when you get a piece of “inbound” patent work, the inbound patent work is nearly always a “Paris Convention” task.  By this I mean that a company located outside of Argentina filed a patent application in their own country, and then if the company wants to pursue patent protection in Argentina, the only choice is to file a patent application in Argentina within twelve months of the first filing.

So the inbound emails received at an Argentine patent firm always begin something like this:

we entrust to you the filing of an Argentine patent application claiming priority from application number X filed [some date that is 11½ months ago].

There has been a lot of buzz lately that Argentina might join the PCT Real Soon Now.  What will it be like for an Argentine practitioner when Argentina joins the PCT?  The main change will be that the emails will be different than before.  They will begin something like this:

we entrust to you the entry into the Argentine national phase from a PCT application Y claiming priority from application number X filed [some date that is 29½ months ago].

The alert reader will spot the big difference.  The triggering event for the email will be a shift of about eighteen months.  In particular, this means that when Argentina joins the PCT, there will be an interval of about 18 months during which (a) the workflow due to PCT filings will not yet have begun and (b) the workflow from Paris filings will have diminished.

For a patent firm that is dependent upon inbound patent work, this interval of about 18 months of reduced work is understandably daunting.

WIPO did a study some years ago of the affect of PCT accession.  It was published in the 2013 PCT Yearly Review.  I have excerpted the six-page study and you can see it here.  The study reviews the actual PCT accession experiences in several countries.  The study acknowledged the 18-month period during which the workload for practitioners is smaller than before.   As I read the study, it suggests that eventually, the workload returns to its legacy level or increases above the legacy level.

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