The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
INTERNATIONAL PATENT APPLICATION OR PCT
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The Law Firm ofLouis Ventre, Jr.Registered Patent Attorney INTERNATIONAL PATENT APPLICATION OR PCT |
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A WORLD PATENT DOES NOT EXIST I Want to Protect my Invention Throughout the World. Is
this a World Patent? No. As valuable as this would be, there is no
such thing as a world patent. There is not one patent that applies
throughout the world. If you want patent protection in more than one
country, ultimately you must apply in every nation or region you want that
protection in. The PCT application process only gives you the ability to
apply a first stage search process to your application and have it apply
in a second stage to the nations in which you want protection. You still
have to apply to those second stage nations separately after the first
stage is completed.
PCT EXPLANATION BREAKOUT LAYOUT. The PCT is a complex subject are that
requires more than one page of explanation. The PCT discussion is on
5 web pages:
PATENT COOPERATION TREATY (PCT) What is the PCT?
The Patent Cooperation Treaty or PCT is a multilateral treaty that was
concluded in Washington in 1970 and entered into force in 1978 with most
of the nations in the industrialized world (139 nations as of August 1,
2008, see map at right). It is administered by the International Bureau of
the World Intellectual Property Organization (WIPO), whose headquarters is
in Geneva (Switzerland).
PCT APPLICATION - A TWO PHASE PROCESS What is the PCT Process? There are two phases to
a PCT application: the International phase lasting 18 to 30 months; and
the national phase where the application is considered by each nation
where patent protection is sought. The PCT provides for the filing of one
patent application ("the international application"), with
effect in several States, instead of filing several separate national
and/or regional patent applications.
WHY FILE A PCT APPLICATION AT ALL What are the Benefits of the PCT Process? By the
single act of filing an international application under the PCT, it is
possible to secure the very effect that, without the PCT, would require as
many filings of separate applications as there are countries or regions in
which the applicant seeks protection. Language commonality. The filing of an
international application takes place in one of the languages (e.g.
English) accepted by the Office with which the application is filed; for
many applicants that will be the language, or one of the languages, used
by the national or regional Patent Office of, or acting for, their
country. One location. The international application is
filed in a single place; it is generally filed at the national Patent
Office of the applicant’s country or at a regional Patent Office acting
for the applicant’s country, or it may be filed directly with the
International Bureau in its capacity as a receiving Office under the PCT.
However, filing first with the International Bureau may require a foreign filing
license. Common formalities. There is a prescribed form
for the international application. This form must be accepted by all
designated Offices for the purposes of the national phase, so that there
is no need to comply with a great variety of widely differing formal
requirements in the many countries in which protection may be
sought. However, the broadest protection is afforded when the
application employs a technical format and style of claiming having
historical precedent in that country. Where the U.S. is the primary
market, it makes sense for an applicant to have his PCT application
prepared by a U.S. practitioner. Fee payments at one office. The international
fees payable in respect of the filing of an international application may
be paid at one time, at one Office and in one currency. The costs and
possible complications connected with the payment, on filing, of many fees
in many countries, and generally in different currencies, are thus
avoided. More time to decide. Before the applicant goes
to the effort and expense of having translations prepared, paying the
national or regional fees and appointing agents in the various countries,
his views are able to mature to a greater extent than would be possible
without the PCT, not only because he has more time, but also because the
international search report, the written opinion of the International
Searching Authority, and the international preliminary report on
patentability constitute a solid basis on which he can judge his chances
of obtaining protection. Any patents subsequently granted on the
application by the designated or elected Offices can be relied on by the
applicant to a greater extent than would have been the case without the
benefit of the international search report, the written opinion of the
International Searching Authority and the international preliminary report
on patentability. More time to pick nations. Moreover, because of
the longer time the applicant has for making decisions, he is better
placed to assess the technical value and economic interest of patent
protection and to select the particular countries in which he desires to
continue seeking protection for his invention. As a result, substantial
savings can be made in both translation and filing costs for those
countries which are no longer of interest to the applicant. Deferred translations. If an international
application is filed in a language which is not both a language accepted
by the International Searching Authority which is to carry out the
international search and a language of publication, it needs to be
translated into an appropriate language shortly after filing, but all the
translations required by the Offices of or acting for the countries in
which the applicant ultimately wishes to obtain protection need to be
prepared 7 to 19 months later. Deferred fees. Fees payable to national or
regional Patent Offices similarly become due later than they do without
the PCT. Search results. An international search report
that is favorable from the applicant’s viewpoint strengthens his
position vis-à-vis the various national or regional Patent Offices, and
his arguments for the grant of a patent by those Offices are likely to
become more convincing.This is more compelling in the case of a favorable international preliminary report on patentability under either Chapter I or II, which contains far more material on which to base an opinion on the chances of obtaining patents than does an international search report. If the international search report and the written opinion of the International Searching Authority are partly favorable and partly unfavorable, the applicant can modify his claims so as to maintain only those that are likely to result in the grant of a patent. If the international search report and the written opinion are unfavorable, and the applicant consequently decides not to proceed any further, he saves the cost of having the application processed in the various countries. Fewer duplications. There is no need to provide
each Office with original drawings, or certified copies of the priority
application. There is also a reduction in national fees in several
countries and the European
Patent Office, etc.
PCT What and Why | PCT How | PCT Strategies | PCT Costs | PCT U.S. National Stage
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This file last modified 08/12/08. |