PCT, Madrid System and WIPO Conventions

The Patent Cooperation Treaty (PCT, 1970) provides a unified procedure for filing patent applications in multiple countries through a single international application. The Madrid System (Agreement 1891 + Protocol 1989) does the same for trademarks. The WIPO Convention (1967) established the World Intellectual Property Organization as the institutional framework administering these and other IP treaties.

Legal Framework

Patent Cooperation Treaty (PCT), 1970

What PCT does and does NOT do

Why: PCT does not harmonise substantive patent law. It streamlines the procedural path so that an inventor can delay expensive national-phase costs (translations, local attorneys, office fees) by up to 30 months while obtaining a preliminary search report indicating likely patentability.

PCT Procedure

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Key PCT terms

Advantages of PCT

1. Time: 30-month delay before national phase costs
2. Information: ISR + Written Opinion indicate likely patentability before incurring national costs
3. Cost efficiency: One filing fee (to WIPO) replaces multiple national fees at filing stage
4. Strategy: Applicant can assess commercial viability during international phase before committing to specific countries
5. Formality: Single set of formal requirements for initial filing

Madrid System (International Trademark Registration)

Structure

The Madrid System comprises two treaties:

How Madrid Protocol works

1. Base application/registration: Applicant has TM application or registration in home country ("Office of Origin")
2. International application: Filed through Office of Origin to WIPO International Bureau
3. Formal examination by WIPO: Checks formalities; enters mark in International Register
4. Notification: WIPO notifies each designated country
5. National examination: Each designated country examines under its own law
6. Refusal or protection: Country has 12/18 months to refuse; silence = protection granted
7. Duration: 10 years, renewable for successive 10-year periods

Central Attack (Art. 6(3))

If the base registration/application is cancelled, refused, or narrowed within 5 years of international registration, the international registration is also cancelled for the same goods/services. This is the "dependency" period.

Protocol safeguard (Transformation): If international registration ceases due to central attack, the holder can transform it into national applications in each designated country, retaining the international registration date.

WIPO Convention, 1967

WIPO-administered treaties (selected)

Illustrations

1. PCT does NOT grant a patent: Common student mistake: "I filed a PCT application, so I have an international patent." Wrong. PCT gives you ONE filing that DELAYS the decision. After 30 months, you must enter national phase in each country you want protection, pay their fees, and get examined by THEIR patent office. The PCT international application is like a reservation at multiple restaurants — you still have to show up at each one, order, and pay.

2. Madrid central attack (the risk): Indian brand "ChaiPoint" registers TM in India, then files Madrid Protocol designating US, UK, Germany, Japan. In year 3, a competitor successfully cancels ChaiPoint's Indian registration (the base). Under central attack rule: ALL international designations (US, UK, Germany, Japan) automatically fall. Three years of global brand-building lost because the base died. Protocol safeguard: ChaiPoint can "transform" each designation into independent national applications, keeping the original international registration date — but must file within 3 months and pay each country's fees.

3. Why PCT saves money (timing): Without PCT: Filing in 10 countries on Day 1 costs ~Rs.25-30 lakhs (translations, foreign attorneys, office fees for all 10). Most startups can't afford this before knowing if the product will sell. With PCT: File one application (cost: ~Rs.1.5 lakhs). Get ISR telling you "your invention is probably novel/non-obvious." Use the 30-month window to test the market. If the product fails commercially by month 18, you simply don't enter national phase — saving Rs.25 lakhs. If it succeeds, you enter only the 4-5 countries where you actually need protection.

Recall Check

1. Does the PCT grant an "international patent"? Explain what PCT actually achieves.
2. What is "central attack" in the Madrid System, and how does the Protocol mitigate its harshness?
3. Name three functions of WIPO beyond treaty administration.

Key Cases

No landmark judicial cases arise directly under PCT/Madrid (procedural treaties). However, administrative practice is instructive:

Indian Patent Office as ISA: Since 2013, the Indian Patent Office has served as an International Searching Authority under PCT, conducting search and preliminary examination for international applications. This demonstrates India's growing role in the global patent infrastructure.

Starbucks Corporation (Madrid Protocol, 2013): India's first international trademark registrations under Madrid Protocol were processed after joining in July 2013, enabling Indian brand owners to protect marks in 100+ countries through a single filing at the Indian Trade Marks Registry.

Distinctions

Flashcards

Q: Does PCT create an "international patent"? A: No. PCT provides a unified filing and search procedure. The actual patent grant/refusal remains exclusively with each national office.

Q: What is the national phase deadline under PCT? A: 30 months from the priority date (or filing date if no priority claimed). Applicant must enter national phase in each desired country by this deadline.

Q: What is the ISR in PCT? A: International Search Report: a prior art search conducted by an International Searching Authority, listing relevant documents affecting novelty and inventive step.

Q: What is "central attack" under the Madrid System? A: If the base registration is cancelled within 5 years of international registration, all designations under that international registration are also cancelled.

Q: When did India join the PCT and Madrid Protocol? A: PCT: 7 December 1998. Madrid Protocol: 8 July 2013.

Q: What advantage does the Protocol offer over the original Madrid Agreement? A: Protocol allows filing based on an application (not just registration), offers English/Spanish filing, allows longer refusal periods (18 months), and provides transformation to save designations after central attack.

Q: What is WIPO's institutional role? A: WIPO administers 26 international IP treaties, provides filing services (PCT, Madrid, Hague), promotes IP norm-setting, capacity-building for developing countries, and operates dispute resolution services.

Exam Scenario

BioGen India Pvt. Ltd. develops a novel biotech diagnostic kit and wants patent protection in India, USA, EU, Japan, and China. It also wants to register its brand name "BioGenX" in all these jurisdictions.

Advise BioGen on: (a) The PCT route for patent filing: explain the steps from international application to national phase entry, and the cost/time advantages over filing five separate national applications. (b) The Madrid Protocol route for trademark registration: explain the requirement of a base application in India, the role of WIPO, and the risk of central attack. (c) Whether BioGen must wait for patent grant in India before filing internationally under PCT.

See Also

• PIL-5.4 Specialised Agencies of the United Nations — WIPO is a UN specialised agency; its mandate, structure, and relationship with WTO are covered here
• PIL-3.5 Treaties — PCT and Madrid Protocol are multilateral treaties; reservation rules and withdrawal procedures follow general treaty law
• TRIPS Agreement 1994 and Its Impact — TRIPS enforcement through WTO is why PCT/Madrid remain voluntary while TRIPS is binding on all WTO members