Patent Cooperation Treaty (PCT) / International Patent Filing In A Nutshell
The Patent Cooperation Treaty (PCT) is an international patent law treaty among 144 contracting states. The world’s major corporations, research institutions, and universities as well as medium-sized enterprises and individual inventors use the PCT when they seek international patent protection. The contracting states that are parties to the PCT constitute the International Patent Cooperation Union. For a list of contracting states, please see the web site for the World Intellectual Property Organization (WIPO) at http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=6 .
There are a number of options you can choose when setting out to protect your invention in several countries. For example:
(a) You can file separate patent applications at the same time in all of the countries in which you would like to protect your invention;
(b) You can file a patent application in a Paris Convention country (one of the member states of the Paris Convention for the Protection of Industrial Property), and then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of the filing date of the first application; or
(c) You can file an application under the PCT, which is often simpler and more cost-effective than either (a) or (b).
The PCT makes it possible to initiate the process of seeking patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application (or, alternatively, “PCT” application) instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices when individual applications are filed based on the PCT during what is called the “national phase.”
It is important to note that a PCT application does not result in the grant of a patent since there is no such thing as an “International Patent”. The grant of patents is decided by each national or regional authority. The PCT application establishes a filing date in all contracting states and must be followed up with the step of entering into national or regional phases in order to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law in each jurisdiction in which a patent is desired.
Below is an outline of the steps involved in the PCT procedure:
Filing: An international application, complying with the PCT formality requirements, in one language, with the payment of one set of fees, is filed. If you comply with all PCT requirements, subsequent adaptation to varying national (or regional) formal requirements (and the cost associated therewith) may not be necessary.
PCT applicants generally pay three types of fees with the filing of their international applications: an international filing fee, a search fee, and a small transmittal fee. These fees vary depending on exchange rates, which International Searching Authority is chosen, and the receiving office.
International Search: An International Searching Authority (ISA) identifies the published documents which may have an influence on whether your invention is patentable and establishes an opinion on your invention’s patentability. A PCT International Search is a search of the relevant patent documents and other technical literature in those languages in which most patent applications are filed. The quality of the search is assured by the standards provided by the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent offices. When an International Search Report is issued you are able to evaluate your chances of obtaining patents in PCT Contract States. A favorable search report assists you in the further processing of your application in those countries in which you wish to obtain protection. An unfavorable search report gives you the opportunity to amend the claims in your international patent application to better distinguish your invention from those documents and have it published, or to withdraw the application before it is published.
For every international application the ISA will write, at the same time that it establishes the international search report, a written opinion, which is a preliminary and non-binding opinion on whether the invention appears to meet the patentability criteria in light of the search report results. That opinion is sent to you and to WIPO together with the international search report. The written opinion helps you understand and interpret the results of the search report with specific reference to the text of your international application, being of special help to you where you want to evaluate your chances of obtaining a patent without incurring the additional cost of international preliminary examination.
International Publication: After the expiration of 18 months from the earliest filing date, the content of your international application is published, which allows third parties to view your international application.
International Preliminary Examination (optional): An International Preliminary Examining Authority (IPEA), at your request, carries out an additional patentability analysis, usually on an amended version of your application. The IPEA is a second evaluation of the potential patentability of the invention using the same standards on which the written opinion of the ISA was based. If you wish to make amendments to your international application in order to overcome documents identified in the search report and conclusions made in the written opinion of the ISA, the international preliminary examination provides the only chance to do just that. The IPEA is your only chance to actively participate in the examination process and potentially influence the findings of the examiner before entering the national phase. The IPEA is provided to the applicant as well as WIPO and WIPO forwards the IPEA on to the patent offices of the contracting states which request it.
National Phase: After the end of the PCT procedure, you start to pursue the grant of your patent directly before the national (or regional) patent offices of the countries in which you want to a patent. It is only after you have decided whether, and in respect of which states, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT contracting states’ patent offices, before the end of the 30th month from the priority date.
Once you have entered the national phase, the national or regional patent offices concerned begin the process of determining whether they will grant you a patent. Any examination these offices undertake may be made easier by the PCT international search report and the written opinion.
The fees you will need to pay as you enter the national phase represent the most significant pre-grant costs. They can include fees for translations of your application, national (or regional) office filing fees, and fees for acquiring the services of local patent agents. You should also remember that in the case of all granted patents, whether or not the PCT is used to obtain them, you will need to pay maintenance fees in each country in order to keep the patents alive.
From the above information, you can see that there are great advantages to filing PCT when you wish to protect your invention internationally. Below is a list of a few of them.
(i) You have up to 18 months more than if you had not used the PCT to make the decision to seek protection internationally;
(ii) You can be certain that, if your international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT contracting states’ patent office during the national phase of the application;
(iii) On the basis of the international search report and the written opinion, you can evaluate with reasonable probability the chances of your invention being patented;
(iv) You have the possibility during the optional international preliminary examination to amend the international application and, thus, put it in order before processing by the various patent offices;
(v) The search and examination work of patent offices can be reduced or eliminated thanks to the international search report, the written opinion, and, where applicable, the international preliminary report on patentability that accompany the international application;
(vi) Since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
(vii) For you , international publication makes your application available to the world, which can be an effective means of advertising and looking for potential licensees.
There is so much more that could be included in this blog, but then it would not be in a “nut shell”. International filings can be a very confusing maze to maneuver. It is virtually impossible to obtain an international patent without an experienced patent attorney to guide you through the process. Head, Johnson & Kachigian, P.C. has developed and maintained international IP portfolios for our worldwide clients and garnered great relationships with international associates in virtually every major industrialized country. If you require international protection for your inventions, Head, Johnson & Kachigian, P.C. is ready to guide you through the process.
