INTERNATIONAL PATENT APPLICATION PROCESS

Worldwide Patents Do Not Exist

I want to protect my invention worldwide. Is there a patent, which operates around the world?

Such a patent would be very valuable to the inventor. Unfortunately, there is no such a thing as a "world-wide patent". If you want to protect their invention more than in one country, you must file an application for a patent in a country or region where you want to be protected. Patent Cooperation Treaty (PCT) is a process, which gives you an opportunity to begin the process of obtaining a patent in any country of the world, which is a party to the agreement by filing a single application. The second phase of the process is carried out in the country in which you wish to obtain a patent. You must apply in the country where you want to be granted a patent on a previously filed PCT application.

Patent Cooperation Treaty (PCT)

What is the PCT?

Patent Cooperation Treaty is a multilateral treaty that was signed in Washington in 1970 and came into force in 1978 in most countries of the world (139 states as of September 1, 2008). It is administered by the World Intellectual Property Organization (WIPO), which is headquartered in Geneva (Switzerland).

PCT - Two Phases of the Process

What is the PCT process? PCT includes two phases: the International phase, which lasts from 18 to 30 months and the national phase, in which the application is processed in individual countries. PCT provides for the process permitting to file one "international application" instead of several separate national or regional patent applications.

What Are the Benefits of the PCT Process?

By filing a single international application under PCT, you can achieve what, without the PCT, requires submission of applications in all countries where you want to get a patent.

One Language

Filing of an international application may be done in one of the languages, which are official languages of the receiving office but not one of the official languages of PCT. For most applicants, this language is the language used by their national or regional patent office or the language used by the Patent Office representing their country.

One Place

International applications are filed in one location. Usually it is the national or regional patent offices of the applicant or the patent office, acting in the interests of their country. The applicant can always file directly with the "international bureau" as the receiving office. Nevertheless, it is necessary to take into account that some countries require the applicant to obtain permission before filing a PCT application. Filing directly with the "international bureau" as the "receiving office" without permission can lead to problems for the applicant.

General Formalities

There is an established international application form. This form must be accepted by all national patent offices when the application is the national phase. Thus, there is no need to become familiar with a variety of formal requirements of the countries in which the applicant wishes to obtain a patent. Despite this, it is better to take into account patent practices in the particular country or countries in which the applicant wants to obtain a patent. For example, if the United States is a major market for the applicant, it makes sense for the application to be prepared by an attorney practicing patent law in the United States.

Fees Are Collected in One Office

Fees associated with an international application may be paid at the same time, in one office and in one currency. Thus, there are no difficulties associated with the payments to the various offices of the world in different currencies.

More Time for Decision

Before the applicant starts spending time and money for a translation, national or regional fees, and patent attorneys in different countries, his goals may mature to a greater extent than would be possible without PCT. It is possible, not only because the PCT process provides more time for decisions, but also because before the applicant enters a national stage, he may take the advantage of an international search report, a written opinion from the International Searching Authority, and a preliminary report on patentability. These documents provide a solid foundation on which to judge chances of success in obtaining a patent. Not only will the above-mentioned documents showing patentability favorably affect decisions by patent offices around the world, but also the subsequent patents will provide a greater protection.

More Time to Select Countries

Since the applicant has more time to make a decision, he could better assess the technical and economic value of patent protection and choose the specific countries where he wants to continue seeking protection for his invention. Thus, the inventor can save on the costs of translation into another language and other costs associated with obtaining a patent in countries, which are no longer of interest to the applicant.

Deferred Translations into Other Languages

If the international application filed in a language that is not the same as the language adopted by the International Searching Authority and the language of the publication of the application, it must be translated into an appropriate language after the initial filing. A translation must be provided within 7 to 19 months after the filing.

Search

The result of an international search, which is favorable to the applicant, will strengthen the position of the application when it is being examined by various national or regional patent offices. Arguments for granting a patent in those countries or regions will become more convincing.

These arguments are even more compelling in the case of a favorable international preliminary report on patentability, which in accordance with the PCT procedures contains more material for the conclusion of patentability.

If the results of the international search and written opinion are only partially favorable, the applicant may amend the claims to increase the chances of obtaining a patent. If the results of the international search and written opinion are unfavorable in all respects, the applicant may decide not to spend money on filing in individual countries.

Less Duplication

There is no need to provide each national or regional office with the original drawings or a notarized copy of the priority application. Many countries and the European Patent Office provide for a reduction in fees in the national phase.

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