Patent Cooperation Treaty

/Patent Cooperation Treaty
Patent Cooperation Treaty2018-07-31T12:51:35+00:00
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1) What is the Patent Cooperation Treaty (PCT)?

The Patent Cooperation Treaty or the PCT is an international treaty signed by over 145 states that makes it possible to obtain a patent for an invention in a large number of countries by filing for an invention patent one single time. Before the PCT, if you needed to obtain protection for your invention in more than one country you had to file an application in each country that you were interested in. The treaty makes it possible to obtain international protection by filing an “international” patent application which will be evaluated also at the level of national or regional patent Office in the “national” phase of the process. 

PCT procedure

The PCT procedure includes a series of steps that are actually pretty similar to the ones included by the national process of granted an invention patent.

Filing for the international patent

This step includes filing international application at a national or regional patent Office or WIPO. Your application needs to comply with the PCT requirements and it is filed in one language. You need to pay only one set of fees.

International Search

As with the national application, in order to establish that your invention is patentable, the ISA (International Searching Authority) which is one of the world’s major patent Offices searches and compares your invention to all the published patent documents and technical literature considers “prior art”. The result of this search is a report including the ISA written opinion on whether your invention is patentable or not.

International Publication

After a period of 18 months from the time you have filed your international application, its content will be published and disclosed to the world.

Supplementary International Search (optional)

If you consider that you are not satisfied with the initial International Search you can request a Supplementary International Search just to make sure you are covered and that there is nothing out there that could invalidate your patent. The supplementary search has the purpose of identifying documents that might have been missed by the initial search due to different languages and the diversity of fields to be covered.

International Preliminary Examination (optional)

If you consider necessary, you can request ISA to carry out an additional patentability analysis. This analysis is usually carried out on an amended version of your initial application.

National Phase

The PCT procedure usually takes around 30 months from the date you have filed your initial application. After the procedure is over, you still have work to do. You will be starting to pursue the grant of the patent directly with the national or regional patent Offices that are of interest to you.

Because an invention patent is territorially limited, an UK patent will only protect your invention in UK and if you need to protect it in more than one country you will need more than a national patent. You have two option from which you can choose.

The first option is the direct one and involves direct and simultaneous filing in all the countries where you want to have your invention protected. For some of the countries, you might benefit from regional filing.

The second option is called the Paris route. If you filed your patent application in a country that is a Member State of the Paris Convention for the Protection of Industrial Property, then you don’t need to file the applications simultaneously. If you file your application within 12 months from the initial one in the other Paris Convention countries that interest you, you will be able to claim the initial filing date as the priority date for all these countries.

The second option is called the PCT route and involves filing a single application under the PCT. The deadline for this application is 12 months from your initial filing for patent. As you might guess, this option is much simpler and less expensive than the direct approach or the Paris route.

Because an invention patent is territorially limited, an UK patent will only protect your invention in UK and if you need to protect it in more than one country you will need more than a national patent. You have two option from which you can choose.

The first option is the direct one and involves direct and simultaneous filing in all the countries where you want to have your invention protected. For some of the countries, you might benefit from regional filing.

The second option is called the Paris route. If you filed your patent application in a country that is a Member State of the Paris Convention for the Protection of Industrial Property, then you don’t need to file the applications simultaneously. If you file your application within 12 months from the initial one in the other Paris Convention countries that interest you, you will be able to claim the initial filing date as the priority date for all these countries.

The second option is called the PCT route and involves filing a single application under the PCT. The deadline for this application is 12 months from your initial filing for patent. As you might guess, this option is much simpler and less expensive than the direct approach or the Paris route.

If you want to know who uses the PCT, you can check the PCT Newsletter which includes a list of the largest PCT applicants of the year. Generally, the PCT is used by applicants such as major corporations, universities, research institutions but also small and medium sized enterprises and individuals. While the financial resources and fields of activity differ greatly, all of them have in common the need for international patent protection.

If your patent application meets the requirements for receiving an international filing date, it will have the same effect that a national patent has, but in all the PCT Contracting States.

Filing with PCT has additional advantages such as being exempt from making adaptations to national or regional requirements that might vary and also from the additional costs associated with these modifications. This happens if your application meets certain requirements included in the Treaty and Regulations binding on all the PCT contracting States.

An international patent application can be filed by any national or resident of a PCT Contracting State. If you are more than one applicants on the patent application, it is enough if one of your meets this condition.

PCT “receiving Officers” are considered national patent Offices and the WIPO, where you can file your international patent application. You can file directly with the WIPO if your State’s national security provisions allow it.

There are also other alternatives such as the regional patent Office where you can file your international application if your national law allows it and if your country is part of one of the following international agreements:

  • The ARIPO Harare Protocol
  • The OAPI Bangui Agreement
  • The Eurasian Patent Convention
  • The European Patent Convention

 

Yes, the international application can be filed electronically with any receiving Officers which are known to accept such filings.  The e-PCT-filing, which is the WIPO web service will help you prepare your application correctly by validating your data and showing you the parts that have been completed incorrectly or inconsistently and might hurt your application. As an alternative, you can use the software provided by WIP which is called PCT-SAFE.

These tools also help you manage the whole application process by showing you time limits for the next steps you need to take. If you file your PCT application on-line you will also benefit from fee reductions. Find out more about filing your application on-line on the WIPO website at www.wipo.int/pct-safe/en/.

Filing for a PCT international patent generally involves three types of fees that must be paid:

(a) an international filing fee – associated with filing your application which is 1,330 Swiss francs,

(b) a search fee – associated with the search stage. This fee can vary depending on what ISA chooses, from 150 to 2,000 Swiss francs

(c) a transmittal fee which is a small one and also varies depending on the receiving Office.

One of the advantages of filing a PCT application is that, at his stage, you don’t have to pay the fees you would need to pay if you would file separately with each national or regional Office from the countries where you require protection for your patent. Since the international patent application is effective in all PCT Contracting States, you only pay the fee one time. If you need more information on PCT fees, consult the PCT Applicant’s Guide, the PCT Newsletter, and the Fee Tables or ask at the receiving Offices.

The most significant expenses in obtaining an international patent are represented by the fees that you need to pay when your application enters the national phase. These fees might include:

  • Translations fees
  • Filing fees (for filing at with national or regional Offices)
  • Fees paid to local patent attorneys, agents or advisors.

Some national and regional Offices are using lower fees for international applications than for national applications, taking into consideration that you have already paid some fees during the international application process.

You should still have in mind the fact that in order to keep the patent alive after you have obtained them, you will have to pay maintenance fees in every country where you have received protection for your invention, no matter if the patent has been obtain through PCT or directly.

If you choose to file your PCT application electronically you might benefit from fee reductions, depending on the type of your filing and the format or your application.

A 90% fee reduction is available for:

–  Applicants (natural persons) from developing countries for fees such as the international filing fee. This reduction is meant to encourage the use of the PCT system.

– National or resident in a State classified as a “least developed country” by the United Nations. In this case, it does not matter if the applicant it is a natural person or not.

In both cases, if there are multiple applicants on the application, each of them must comply with these criteria.

Other fee reductions available are those offered by some ISAs for the international search fee. To benefit from this reduction you need to be a national or a resident from certain countries listed in Annex D of the PCT Applicant’s Guide.

Natural persons, SMEs, not-for-profit research institutes and universities might also benefit from such reductions granted by some national or regional Offices.

The international phase generally takes up to 18 months (since the date you have filed your international patent application). Or you can consider 30 months from the date you have filed your initial patent application (priority date). After this period of waiting it is time to start your national phase. Taking into consideration that during the national phase each national or regional Office needs to examine your patent application, the duration or this phase depends on how fast or slow each Office is examining your claim.

It is important to use this waiting time before starting your national phase to make sure your invention has enough potential and commercial value to justify the costs of filing in each country where you need protection for your invention and also the annual costs of renewing the patent that you need to pay in each of the countries where you receive the patent.

If you prefer not to wait, you can request an early entry into the national phase, so that you will not have to wait 18 months from filing the international patent application.

Generally, if you want to protect your invention outside your country, you will start the process of obtaining an international patent by first filing for a national or regional one. Within 12 months after this initial application you can file your international patent application. The date when you have filed your initial national or regional application is considered and named the “priority date”. Claiming priority means that your patent can’t be invalidated due to any acts that take place after the priority date such as the publication of your invention or another filing.

The basic rule is that international patent applications can be filed in any language that it is accepted by the Office where it is filed. There might be the case where ISA does not accept your application in a certain language to do the required search. In this case you will have to provide a translation of your application for this specific purpose of being the subject of an international search.

If the language in which your application has been written is a language accepted by ISA in carrying out the international search and it is also one of the languages in which international application are being published (“publication language”), your application will be received. PCT “publication languages” are: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish.  You have the option of filing your application in at least one language that does not require translation (neither for international research, nor for publication).

The international search of your PCT international patent application will be carried out by a national or regional Office appointed by the PCT Contracting States as International Searching Authorities (ISAs)

Appointed national Offices are: Australia, Austria, Brazil, Canada, China, Chile, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden, Ukraine and the U.S.

Appointed regional Offices are: the European Patent Office and the Nordic Patent Institute.

Whether a particular ISA is available for the applications of the nationals or residents of a country will be determined by the Office where the applicant has filed his or her request. You might be offered a choice from a list of ISAs to choose from, which might even include the Office where you have filed your application. In this case you are free to choose any ISA considering which one is the best option as requirements relating to language, fees, etc.

A PCT international search determines if your invention is new and innovative by searching and evaluating relevant patent documents and various technical literature and comparing the information you have included in your application with what is already out there. The search is made in the most frequently used languages in patent applications such as Chinese, English, German and Japanese. In some cases the search is extended to documents in French, Korean, Russian and Spanish.

The search is made by qualified staff with extensive experience in evaluating patent applications, using uniform search methods to ensure the same high quality standards no matter the ISA where the search is being made. As a result of this search you will receive a written report on the potential patentability of your invention.

An international search report is the written result of the international search made by ISA on the behalf of your application. It includes a list of references to published patent documents and articles from technical journals which might affect the patentability of your invention. The list of references is accompanied by indications on the relevance of each listed document to the patentability issues of novelty and inventive step (non-obviousness).

The report is usually accompanied by a written opinion on the patentability of your invention including a detailed analysis of the potential of your invention for patentability. Both the report and the written opinion are drafted and sent by ISA.

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The purpose of the search report is to help applicants in evaluating correctly and realistically their chances of obtaining the desired patents in the PCT Contracting States. The search report can either be favorable, or unfavorable.

A favorable report will indicate that the prior art discovered during the search appears to not prevent you from receiving your patent and it would further help you in filing and processing your application in the national phase, in those countries where you want to obtain a patent for your invention.

An unfavorable report usually includes a list of prior art that challenge the novelty or inventive requirement of your invention. Such a report will offer you the chance to improve your application by better distinguishing your invention, especially through the claims section or to withdraw your application before it is published.

Generally, all international patent applications pass through this stage of an international search by ISA. As in any other matter, there are also some exceptions. In cases such as:

– Subject matters which ISA is not required to search

– Unclear description, claims or drawings making ISA unable to carry out a meaningful international search

Instead of sending a search report, in this case ISA issues a declaration stating an international search report will not be issued for the specific application.

If an application is considered by ISA to include multiple inventions and the applicant has only paid the fees associated with the search of one invention, failing to pay the additional fees necessary to cover the search for all the included inventions, ISA will issue a partial search report covering only the invention or inventions considered as paid.

While drafting the search report and together with the search report, ISA will also draft a written, not-binding opinion indicating the measure in which the invention complies with the patentability criteria as concluded from the report.

This opinion will be sent to the applicant along with the report and it has the role of helping the applicant to understand better and easier the results. It also has the role of helping the applicant evaluate correctly the chances of his invention to obtain a patent and, in case of an unfavorable opinion, what needs to be modified, improved or changed in the application or invention.

The purpose of a supplementary search, which is also carried out by ISA (another ISA than the one carrying out the main international research), is to decrease the risk of new documents or technical literature being discovered later in the process, such as in the national phase and invalidate the patent.

Supplementary search is carried out only at the applicant’s request and it has the potential of finding additional results by extending the linguistic and the technical scope of the search.

The content of the supplementary search report is very similar to the one of the main international search report. It also includes a list of documents relevant to the patentability of the invention, but it does not repeat the documents and findings from the main international search report unless their relevance has changed in conjunction with the new findings.

The difference between the supplementary search report and the main international search report is that the supplementary one is not accompanied by a written opinion explaining the findings. This is why sometimes the supplementary search report is more detailed than the main one, to offer all the information necessary in understanding the results.

After 18 months from the priority date, if you have not withdrawn your application, it will be published by WIPO along with the main international search report associated with your application. PATENTSCOPE, the fully searchable database where your international patent application will be published with the other applications is a powerful and flexible database with translation tools and multilingual interfaces.

For 18 months after the priority date and until your application is being internationally published, the only way a third party can have access to information in your application is at your request and with your authorization.

If you withdraw your international patent application before the end of the 18 months, your application will no longer be made public and no third party will have access to it, unless you are offering this access.

After the 18 months from the priority date have passed and your application has been published in the PATENTSCOPE, certain information about your invention will be made public in the database such as the international application, the ISA written opinion and any comments to it.

International preliminary examination is your chance to participate actively in the evaluation of your patent application and to bring amendments or changes. It uses the same standards ISA uses in drafting their written opinion on the patentability of your invention, and it is the step where you can overcome any document identified in the international search report and influence the result of the examination. If you consider it is necessary, you can participate at an interview with the examiner of your application to make your case. The finality of this stage is an international preliminary report on the patentability of your invention.

The international preliminary examination is carried out by the International Preliminary Examining Authorities (IPEAs) which are the same as the ISAs mentioned above and for your application or any PCT application, there is one or more IPEAs that can carry out the examination.

The International Preliminary Report on Patentability (IPRP) includes an opinion about the degree in which your invention and application comply with the international patentability criteria for the claims you have included in the description of your invention and which have been internationally searched. This report is sent to you, WIPO and the national or regional Offices.

It offers you more information to help you evaluate the chances of obtaining a patent, even if in some cases it is on an amended application. If it is a favorable report, it will help you very much in the national phase of your application. While the IPRP is taken into consideration by the national and regional Offices in the national phase and it can influence their decision, granting the patent is still their responsibility and the IPRP opinion is not binding on them.

Before entering the national phase, you need to decide if your invention is worth the cost of continuing with this phase and in what countries you want to obtain patent for your invention. The next step is to comply with the requirements of applying in each of these states which includes paying national fees, appointing local agents and if it is the case, filing translations of your application in the requested language.

As a timeline, you should proceed with the national phase before the end of the 30th month period calculated from the date of your initial application or priority date. If you need more information about the national phase, you can find them in the PCT Applicant’s Guide and in the national chapters for each PCT Contracting State in the same Guide.

The national phase consist of your application being examined by national or regional patent Office which will determine if your invention complies with all the requirements of being granted a patent. Their decision and this entire phase is supported and made easier by the information included in the PCT international search report, the ISA written opinion and by an international preliminary examination report.

PCT is administered by the WIPO which also organizes the PCT Assembly, the PCT Working Group and the Meeting of International Authorities.

WIPO has also direct responsibilities associated with each PCT application filed by receiving and storing all the documents associated with an application, performing a formality examination of the filed documents, publishing the international application on PATENTSCOPE  which is the WIPO online database and also publishing data regarding the PCT application (as prescribed in the Treaty and Regulations). WIPO is also involved in ensuring, when necessary, the translation of various portions of the applications and associated documents filed with it, into English and/or French. It is also responsible for communicating documents to national or regional Offices and third parties and for providing on request legal advice to national and regional Offices and WIPO website users.

WIPO has also the role of coordinating the PCT System and providing assistance to any existing, new or potential Contracting States and their national or regional Offices while also providing advice regarding the implementation of the PCT in the national legislation and support in setting up necessary internal procedures in the patent Offices of the Contracting States.

The PCT Applicant’s Guide and the PCT Newsletter are also published by the WIPO which has the responsibility of creating and disseminating relevant PCT information using the PCT website and other tools (e-mail, telephone, webinars, seminars, training courses etc.)

The Patent Corporation Treaty offers you a lot of benefits in applying for an international patent, giving you more time and more chances to obtain your patent with less money.

(a)  First of all, you gain an additional 18 months than if you have applied directly in each country where you need to protect your invention.

(b)  Your application is safe from rejection in the national phase, because if it complies with the form prescribed by the PCT, there is no formal ground that can sustain a rejection by any PCT Contracting State patent Office

(c) A PCT application process offers you a series of documents, such as the international search report and the ISA written opinion which will help you evaluate correctly the potential patentability of your invention. These documents will show you if it is worth pursuing a patent, and if the answer is yes, they will provide a strong base for your request to be accepted in the national phase.

 (d)  The PCT application process includes a phase known as the “international preliminary examination”, which is optional, but if requested will give you’re the opportunity to directly discuss your application with your examiner and put the application in order before continuing with the national phase;

(e)  If you apply for a patent in Contracting States with PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements, the examination of your application might be fast-tracked;

  1. f) International publication on-line on PATENTSCOPE works as an advertising tool letting the world know about your invention and maybe find companies interested in paying for the right to use your patented invention;

(g) because in this case many of the documents necessary along the process need to be drafted only once, you can save a lot of time and money with a PCT application;

(h) Before entering the national phase you will have all the information necessary to know if applying in the countries where you need to obtain a patent has any chance of success or not. And if the invention is not patentable, you have saved a lot of money. Think about how much would have cost to directly apply in foreign countries without previously knowing if your invention is patentable or not;

(i) And the documents resulted from the international phase (international search report, ISA written opinion, international preliminary report on patentability) make the work of the national and regional Offices in the national phase a lot easier.

The PCT System brings the entire world within your reach and streamlines the process of fulfilling diverse formality requirements. It helps you by postponing the major costs determined by seeking multinational patent protection until you have an accurate evaluation of the patentability of your invention. It also provides a strong basis for patenting decisions and it is today used by the major corporations, research institutions, universities and even SMEs seeking multinational patent protection.