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PCT

International Patent Applications under the Patent Cooperation Treaty

It is not possible to obtain an "international patent." However, it is possible to file an "international patent application", under the Patent Cooperation Treaty (PCT), an international agreement administered by the World Intellectual Property Organization (WIPO - www.wipo.int) and covers most of the major industrial countries of the world. The application will act as an international application for a set period of time, and from which individual foreign patent applications will be able to “branch out”. After that period, the application is converted into individual foreign patent applications, one in each country where patent protection is to be sought, and these applications may then be pursued individually to obtain foreign patents.
The PCT system does not grant or examine patent applications. Its main benefit is that it provides a way into pursuing application in over 143 states from one application, while enabling you to delay the expensive step of filing many individual foreign patent applications. Further, the PCT system will provide a cost-effective means of assessing the prospects of getting a granted Patent and the potential scope of protection.


Advantages of the PCT (instead of filing individual national patent applications):

- Decisions on which jurisdictions to pursue protection in, and associated costs of filing individual national patent applications are delayed until the end of the International Phase;
- The route 'buys' an inventor ( and his representative) a lot more time in an instance whereby a decision to seek patent protection in a multitude of states is taken late in the priority year, such that a single PCT application, can be filed, as opposed to, for example 58 applications (including translations, diagrams, etc) around the world in different Patent offices representing the countries in which the applicant desires protection.


Disadvantages of the PCT:

- the total costs are higher;
- it usually takes much longer to get granted Patents, in comparison to other routes.

 

Below is a summary of the procedure:

  1. File application at the local national patent office (e.g UK Intellectual Property Office (UK IPO))

  2. Within one year from the priority date (the filing date for first applications), file PCT. The application enters what is known as the International Phase. The International Phase consists of a Chapter I Phase and, if an optional Demand has been filed, a Chapter II Phase. The Chapter I Phase includes filing the PCT application; preparation of the International Search Report (ISR – which may include documents that are deemed to be relevant for novelty and inventiveness.) and a Written Opinion of the International Search Authority (an opinion on patentability requirements of novelty, inventive step and industrial application). Here an inventor may file amended claims, or comments in response to the ISR / Written opinion of the ISA, although this is only optional; During this phase, publication of the international patent application will occur (~18 months from priority - Note, that publication can only be prevented by withdrawing the international patent application, no later than three weeks before the expected publication date.), together with the ISR and any amendments which have been made. Note that if a Demand is not filed, the Written opinion will be reissued as the International Preliminary Report on Patentability (IPRP, a nonbinding opinion on patentability) under Chapter I.

        Chapter II Phase (which is optional) includes the filing of a Demand. An inventor may also submit amendments         and/or written arguments to address any objections raised in the Written opinion.

  1. Since the PCT application in itself cannot become a patent, then at 30/ 31 months (depending on the countries you require individual protection) you enter a period that is known as the National/Regional Phase, whereby the PCT application branches out into individual national patent applications. ( note this must happen before the appropriate deadline(s) which means you will have to decide on the PCT states you wish to proceed in, before 30 months (deadline) from the priority date). The application will then be processed in accordance to individual requirements of the national Patent offices of the PCT states (Note that the requirements for National/Regional Phase processing are different for each State and may involve appointment of a local attorney; filing more documents and paying the State's official fees. Sometimes it may also be necessary to submit a translation of the application into a local official language (For example, for an English language PCT application, it is sometimes necessary to prepare and file a translation of the entire application into the national language of the respective Patent office of the PCT state, within two months of entering National Phase in some states, and for most States, the translation must be filed no later than the National/Regional Phase deadline. This means the inventor must allow sufficient time to prepare translations). In addition it is possible to enter national phase early in some states.)

    Please note that some states, such as the USA (and the EPO), may perform their own supplementary search before examining the application. Its also interesting to note that after entering the European Regional Phase, an examination will most certainly be performed by the same EPO Examiner who prepared the IPRP. Thus, if the IPRP showed positive results, then it is likely that the prosecution path will be less problematic during the European Regional Phase. However, if no amendments were made

Criteria: -


     1. Generally, at least one applicant must be a resident or national of a country that is a member of the PCT.

  1. If none of the applicants is a resident or national of a member state, then a PCT application cannot be filed.

        Ownership and Formalities:-

If none of the applicants of the PCT application are inventors, it is usually recommended that the inventor(s) sign an assignment document assigning the invention to the applicants. This avoids ownership difficulties, especially for countries such as the USA. Thus, at filing, the applicant must provide his full name, contact addresses and nationality, including similar details for each of the inventors. Note that all States are automatically designated at this stage. Power of Attorney documents, (although not required in the UK) may also be filed. After filing a copy will be forwarded to the International Searching Authority (ISA) (for PCT's filed at UKIPO, the ISA is the European Patent Office (EPO)). The ISA will conduct a search of the relevant prior art, and will prepare both an International Search Report (ISR) and a Written Opinion.

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