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 your 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 provides you with an opportunity to begin the process of obtaining patents for your invention in most countries by filing a single application.  The second phase of the process is carried out in a country(ies) in which you wish to obtain a patent(s) for your invention.

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 (currently 148 states).  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. The 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 the PCT, you can achieve what, without the PCT, requires submissions of applications in all countries where you want to get a patent.

One Language

Filing of an international application is done in one language, which is one of the official languages.  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 offices acting in the interests of their country.  The applicant can always file directly with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva as the receiving office.  Please note that some countries require the applicant to obtain a foreign filing license before filing a PCT application directly.

General Formalities

There is an established international application form.  This form must be accepted by all national patent offices when the application enters 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. However, it is better to take into account patent practices of the particular country or countries in which the applicant wishes to obtain a patent.  For example, if the United States is a major market for the applicant, it makes sense for the PCT application to be prepared by a patent attorney practicing in the United States.

Fees Are Collected in One Office

Fees associated with an international application are paid in one office and in one currency.  Thus, there are no difficulties associated with the payments to various offices and in different currencies.

More Time for Decision

Before the applicant starts spending time and money on translations, national or regional fees, and patent attorneys in different countries, his/her goals may mature to a greater extent than would be possible without the PCT.  The PCT process provides more time for decisions to be made. Moreover, before the applicant enters a national stage, he/she 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 may provide some foundation on which to judge chances of success in obtaining patents.

More Time to Select Countries

Since the applicant has more time to make a decision, he/she could better assess the technical and economic value of patent protection and choose the specific countries where he/she wants to continue seeking protection for the 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 7 to 19 months after the filing.

International 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. Even though the result of the search is not binding on national 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 provide for a reduction in fees in the national phase.