You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

November 15, 2013

Global Patent Protection under the PCT System

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

Abraham Lincoln once said, “The patent system added the fuel of interest to the fire of genius.” It was an unmistakably true statement; patents have undoubtedly become an essential tool for protecting new inventions. Not only do patents guard against the unauthorized use of an inventor’s creation, but they foster innovation by granting exclusive legal rights for limited durations.

However, one may ask how legal patent rights can be obtained on a global scale. Clearly, a patent’s efficacy is severely limited if its privileges and effects are limited to just a single country. The solution to this question may lie with the Patent Cooperation Treaty (PCT). This article will discuss how patent owners can extend protection for their inventions under this system.

The PCT is an international treaty regulated by the World Intellectual Property Organization (WIPO). It provides member states with a unified protocol for filing patent applications. Currently, 148 countries including Thailand, which joined in 2009, are members of the PCT.

In recent years, filing patent applications through the PCT has attracted much interest from Thai individuals, businesses, and legal entities. But there is still a misunderstanding that filing a patent application through the PCT will grant worldwide patent protection.

In fact, the PCT does not offer universal or worldwide protection for a claimed invention; it only offers a provisional solution for the unified processing of an application, and it establishes whether or not the claimed invention meets the patentability requirements. Therefore, it helps to ascertain whether or not patent protection is worth pursuing. For PCT applications that meet the patentability requirements, the process for obtaining a fully-protected patent in each PCT-adhering jurisdiction is much quicker and more straightforward.

Obtaining patent protection through the PCT begins with filing an International Application either at the national or regional patent office (known as the Receiving Office) or directly with WIPO. Next, the application will proceed to the International Search and International Publication stages. During the search stage, the appointed patent office will conduct a worldwide search to locate any existing inventions, patents, and non-patent literature (known as “prior art”) that may compromise the patentability of the claimed invention.

After this search is completed, an International Search Report (ISR) and a written opinion will be issued, which list all the documents that may affect the patentability of the claimed invention, and which contain the examiner’s opinion as to why the invention may or may not be patented. In the event of an unfavorable ISR, there will be an opportunity to amend the claims and/or description to improve patentability, and a chance to discuss with the examiner ways to further improve patentability.

As mentioned above, WIPO does not issue a lawfully protected patent; it merely evaluates how likely it is to obtain a patent in a PCT member state. Therefore, PCT applications must be filed at the patent office of a PCT member state to obtain a legally protected patent in that jurisdiction.

Since the PCT process already evaluates the patentability of the claimed invention, any advantageous assessments contained within the ISR and/or written opinion can be used to further facilitate the acceptance of the claimed invention, which reduces the time between filing and grant of a patent. Patent offices of PCT member states are required to accept all PCT applications, and fewer formal documents are required.

From a business perspective, filing a patent application through the PCT offers a number of advantages. For instance, protection can be obtained in 148 member states by filing a single PCT application in one language. PCT applications can also delay payments relating to the filing and prosecuting of a patent application before a national or regional patent office, as they provide an extended time limit for filing additional applications in other member states.

During this extended period, more market research can be conducted to locate potential business partners or investors, and the commercial value of a claimed invention can also be further evaluated. Most importantly, the PCT evaluation allows an informed decision to be made with regard to pursuing a claimed invention, which effectively lowers the cost of filing an application at a national or regional patent office. Ultimately, the PCT system reduces the chance of making a bad investment.

Clearly, the PCT offers many valuable advantages over other patent application systems; but careful steps must be taken to ensure that a PCT application will yield its full range of benefits. Armed with a full understanding of how the PCT system works, patent owners will be in a much stronger position to derive commercial advantages from their inventions.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

June 30, 2026
Customs recordation is an enforcement mechanism in Myanmar that enables intellectual property (IP) rights holders to seek prevention of the cross-border movement of infringing goods. The enactment of Myanmar’s IP laws in 2019 has enabled customs recordation for registered marks and copyrights under the Trademark Law 2019 and the Copyright Law 2019. By contrast, the Patent Law 2019 and the Industrial Design Law 2019 do not provide a practical framework for customs recordation, and accordingly such rights are not subject to the customs recordation regime. Under the Trademark Law 2019, rights holders may apply for customs recordation and may also ask the Customs Department to suspend the release of goods suspected of bearing counterfeit marks. Likewise, the Copyright Law 2019 allows for customs intervention in relation to pirated works. These provisions reflect Myanmar’s gradual alignment with international standards on border measures, although the implementation framework remains at a relatively early stage of development. Customs Recordation Pursuant to the Trademark Law 2019 and the Copyright Law 2019, the relevant authorities have issued customs rules concerning the protection of registered marks and copyrights. In practice, the process generally begins with the submission of an application to the Customs Department together with supporting documentation. This typically includes proof of registration in Myanmar; details of the rights holder, applicant, and any authorized representative; and a comprehensive description of the genuine goods. Product identification materials—such as photographs, packaging samples, and distinguishing features—are particularly important in helping customs officers identify suspected infringing goods. A recordation remains valid for two years from the date of approval. It may be renewed for additional two-year terms, provided that the renewal application is filed within the thirty days prior to expiry for marks and up to thirty days in advance of the expiry date for copyrights, in accordance with
Read More
June 24, 2026
Patent enablement requirements are provided under Article 102 of Vietnam’s Law on Intellectual Property (IP Law). In particular, a patent specification must “fully and clearly disclose the nature of the invention to such an extent that, based on the specification, a person having ordinary skill in the relevant art can implement the invention.” In pharmaceutical and biotechnology patents, this requirement is more complicated and subject to more rigorous assessment. The Patent Examination Guidelines (Guidelines) of the Intellectual Property Office of Vietnam (IP Office) were amended in March 2026 to introduce Annexes III and IV for the pharmaceutical and biotechnology sectors, in which Annex III provides detailed guidelines on the assessment of specification requirements. These amendments were made under a project for strengthening capacity in industrial property examination between the Japan International Cooperation Agency (JICA) and the IP Office. Annex III provides detailed instructions on how examiners assess enablement in a pharmaceutical or biotechnology application, and offers examples of acceptable and unacceptable descriptions with regard to the enablement aspect. Enablement Requirements in Pharma and Biotech Patents Article 12.7 of Circular 10/2026/TT-BKHCN (Circular 10) adds to the requirements of Article 102 of the IP Law that the description must demonstrate the novelty, inventive step, and industrial applicability of the technical solution. For pharmaceutical composition subject matters, Article 12.9 of Circular 10 sets out that the description must present the results of clinical trials and/or the pharmacological effects of the claimed pharmaceutical composition, and must include at least the following information: Substance/mixture used. Testing method (system) employed. Information on the test results. Correlation between the pharmacological effects obtained from the tests and the application of the pharmaceutical product in the prevention, diagnosis, and treatment of diseases. The Guidelines note that pharmacological study results should be presented in a quantified manner, and pharmacological
Read More
June 16, 2026
Since the implementation of the Trademark Law 2019 on April 1, 2023, Myanmar has operated under a modern first-to-file trademark system that brings its registration framework closer to international practice. As the new regime continues to develop in practice, applicants are increasingly required to navigate formal examination requirements, substantive objections, and procedural deadlines with greater precision. This article provides a high-level review of the trademark examination process in Myanmar, focusing on the principal stages from initial review to approval, the types of objections commonly raised by the Intellectual Property Department (IPD), and the key considerations for responding effectively. A clear understanding of these issues is essential for applicants seeking to secure registration efficiently and to mitigate avoidable delays or refusals. Examination Process: Key Stages Trademark applications filed with the IPD undergo two stages of review. Formality Examination The IPD first verifies compliance with procedural requirements, including: Correct Nice Classification Clear mark representation Accurate applicant details Clearly defined goods or services Representative details, if the application is filed by a representative Other formality requirements cover translation and transliteration of any non-English or non-Myanmar elements in the mark, color claim details, applicable disclaimers, and payment of official fees. Deficiencies result in an office action requiring correction within 30 days, which may be extended upon request. Registrability Examination The IPD also assesses registrability. A mark may be refused if it: Lacks distinctiveness Is descriptive or generic Misleads the public or violates public order/morality Contains prohibited state symbols Only compliant applications proceed to publication. Responding to Office Actions Applicants must respond within 30 days of notification from the IPD. Depending on the nature of the objection, strategies may include submitting legal arguments for distinctiveness, providing evidence of acquired distinctiveness, filing appropriate disclaimers, clarifying descriptions such as color claims, or amending the listed goods
Read More
June 15, 2026
The surge in AI development has led to a desperate demand for large, high-quality training data. However, real-world data can be expensive to collect, difficult to access, and often subject to strict privacy and regulatory constraints. Synthetic data, which consists of artificially generated records that replicate the statistical properties of real-world data without reproducing specific individuals’ information, provides an appealing solution by generating artificial datasets at scale without relying on identifiable personal information. It combines speed, cost efficiency, and regulatory compliance, making it a sensible alternative for organizations seeking to reduce risks while maintaining data utility. When properly anonymized, synthetic datasets may fall outside the scope of laws such as the EU’s General Data Protection Regulation (GDPR) or Thailand’s Personal Data Protection Act (PDPA), reducing compliance burdens while still supporting high-quality model training. However, relying on synthetic data without rigorous legal due diligence could be a strategic mistake. It replaces one set of known risks (scraping, direct privacy liability) with a new set of complex liabilities. The narrative that synthetic data is a “silver bullet” for privacy and IP compliance is dangerous and could be misleading. While synthetic data addresses data scarcity, it also introduces new legal uncertainties. Legal counsel should anticipate downstream risks arising from compromised data sources. Models trained on unlawfully obtained data may need to be decommissioned, even if their outputs appear lawful. What is synthetic data? Synthetic data refers to artificially generated information created using AI techniques such as deep learning and generative models. Instead of copying real records, it reproduces the statistical patterns and relationships found in the original dataset. Synthetic data generally falls into three categories: Fully synthetic data – Entirely new data points generated from learned patterns. The model studies the structure of the original data and produces records that resemble real-world
Read More