The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
INTERNATIONAL PATENT APPLICATION OR PCT
A WORLD PATENT DOES NOT EXISTI 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. A PCT application may not be filed for a design, that is, for inventions involving the ornamentallity of an object.
PCT EXPLANATION BREAKOUTLAYOUT. 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 (151 nations as of 08-SEP-2016, 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 international applications do not result in issuance of “international patents” and the International Bureau (IB) does not grant patents. The decision on whether to confer patent rights remains in the hands of the national and/or regional patent offices, and the patent rights are limited to the jurisdiction of the patent granting authority.
WHY FILE A PCT APPLICATION AT ALLWhat are the Benefits of the PCT Process? By the single act of filing an international application with a single patent office (i.e. Receiving Office), it is possible to have a right to later file (up to 30 or 31 months later) a national patent application in as many of the countries or regions that are part of the PCT system as the applicant wishes to seek patent protection.
Most PCT application filings occur within 12 months of filing a first national application in the country of residence of the inventor, but a PCT application can be the first application filing. The PCT deadline for filing the second phase (sometimes called the "second stage") national application(s) in other countries is 30 or 31 months from the priority date. There are a few countries with an earlier deadline, but these are usually ignored by inventors. The "priority date" is the date of the first filing, whether that be the filing date of the first national application or the filing date of the PCT application if that was the first application filed.
Thus, the PCT system delays the need to file separate patent applications in PCT countries. The PCT system permits filing one PCT application that is valid in those PCT countries for about 30 or 31 months from the priority application filing date. At the end of that 30- or 31-month period, one may file a national application in any or almost all of the PCT countries where patent protection is desired. Seen in this light, the PCT system delays but does not eliminate the requirement for patent application filing in any or all of the PCT nations where patent rights may be sought.
In addition, the PCT system provides the applicant with an initial search report prepared on the PCT application, which provides some non-binding guidance on what national examiners may also find when examining the application. The applicant may find this useful in deciding whether or not to file any national stage application. Usually, within sixteen months from the priority date, an applicant-selected International Searching Authority (ISA) will conduct an international search and establish an International Search Report (ISR) along with the written opinion of the ISA. The purpose of the international search is to preliminarily identify relevant prior art that may impact subsequent consideration in the national stage. The ISR lists prior art documents considered to be relevant, the classification of the subject matter and an indication of the field searched. The ISA also establishes a preliminary and non-binding written opinion on the questions whether the invention appears to be novel, involves an inventive step and is industrially applicable. Both the ISR and the written opinion are transmitted to the applicant and the International Bureau and may be used by a national authority in aiding their consideration of the application in any national stage application filed by the applicant.
PCT APPLICATION - A TWO PHASE PROCESSWhat is the PCT Process? There are two phases to a PCT application: the International phase lasting up to 30 or 31 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.
Language commonality. The filing of an international application takes place in one of the languages (e.g. English) accepted by the Receiving 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 (patent offices of any of the countries participating in the PCT system) 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-ŕ-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.
Should I file a PCT or a U.S. non-provisional or both? This question is often raised near the 1-year deadline after filing a provisional application in the U.S. The answer has two schools of thought:
The first says that if you intend to file in more than three countries, you should file a PCT and not file a U.S. non-provisional application. The reasoning is that an applicant should not invest in a U.S. application that may or may not be be patentable. When the interanational search report comes out, it will then let the inventor know if the invention is patentable. Once it is found patentable, then the inventor can more confidently invest in the national stage applications, including in the U.S. Filing only a PCT application can make sense even though it is initially more expensive, when the value of the technology is not known at the one-year anniversary of the provisional filing date. If the inventor does not know the value, then the inventor may want to defer decisions to a later date when the inventor might know more. So, this PCT only strategy could be helpful when there is interest in the technology such that the inventor wants the potential for a patent, but no commercial strategy prospects have matured that might be interested in a patented product.
The second school of thought teaches that one should file both a U.S. non-provisional and a PCT application because the U.S. application would probably be examined before the 30-month national stage filing deadline on the PCT. The earlier U.S. results, which are probably more rigorous that what would be found in an International Search Report by a non-U.S. Internationals Search Authority, can then be used to decide on whether or not to file in the other countries. So, an inventor gets more info and more deciding time when filing both a U.S. applcation and a PCT application. When the inventor feels confident that there will be commercial activities in the U.S. and internationally, and possibly that the inventor would have an easier time convincing investors if a U.S. patent were in hand, then a U.S. application and a PCT application make some sense. He probably moves to a U.S. patent sooner and also preserves his option to later decide if an when to file national stage applications in other countries.
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© 2004 Louis Ventre, Jr.
This file last modified 09/15/16.