Filing a patent application across multiple jurisdictions can be challenging, requiring a comprehensive understanding of the procedures, timelines, costs, and key bodies involved. Explore our latest article to gain in-depth insight into this intricate process through the Patent Cooperation Treaty (PCT), a unified mechanism for streamlined patent filing across 156 Contracting States.
The world of invention and innovation is growing rapidly, with increasing cross-border synergies. To safeguard intellectual property across multiple geographies, the Patent Cooperation Treaty (PCT) presents a seamless avenue. The PCT, which entered into force in 1978, serves to streamline the patent application process, making it feasible to apply for patent protection for an invention simultaneously in many countries. This efficacy was evident in 2022, when the number of PCT filings reached an all-time high, with a total of 278,100 applications — the highest number ever registered in a single year.
In this article, we will delve into the details of the Patent Cooperation Treaty (PCT) procedure, providing a comprehensive guide to help you navigate this process in global patent registration.
1. Understanding the PCT and its Integral Bodies
Administered by the International Bureau of the World Intellectual Property Organization (WIPO), the PCT has 156 Contracting States. The treaty employs four competent international bodies, each playing a pivotal role in the patent filing process:
- The International Bureau (IB): Acts as a coordinating entity among the parties.
- Receiving Office (RO): Checks the application processing, sets the international filing date, and transmits a search copy.
- International Searching Authority (ISA): Conducts a mandatory international search, identifying relevant prior art.
- International Preliminary Examining Authority (IPEA): Conducts a preliminary examination, the result of which is an opinion on the patentability criteria.
2. PCT Procedure: International and National Phases
The PCT procedure consists of two main phases: an international phase and a national phase. The treaty facilitates the filing of a single patent application (“international application”) valid in several states, replacing the need for multiple separate applications.
It’s important to note that the PCT does not eliminate the need for national or regional offices to review the international application in the national phase but it simplifies such a review due to the procedures implemented in the international phase.
3. Advantages of Filing a PCT Application and Required Documents
Filing a PCT application presents multiple benefits, including:
- An extended transition time to the national/regional phase, counted from the priority date and varies per country;
- Compliance with the formal requirements of the patent offices;
- A strategic opportunity to plan costs and find investors;
- The ability to amend the application during the international phase.
However, it’s essential to note that a PCT application is not subject to registration and the granting of a patent. It may be filed within 12 months of the date of filing of a previous application.
The submission of a patent application requires the inclusion of several essential components:
- The actual patent application, specifying the particulars of the inventors, the applicant, and their respective locations;
- A comprehensive and clear statement of the invention that allows technical experts in the relevant field to comprehend and implement the invention;
- The claim — a succinct articulation of the core technical aspects of the invention, which should align with the description provided;
- Any supplementary materials such as drawings. They should be included if they facilitate an understanding of the invention;
- A concise abstract of up to 110 words;
- A Power of Attorney, if an agent has been appointed;
- Evidence of fee payment, which should be settled immediately or within a month from the date of application;
- A certified copy of the priority document (the original application), which needs to be submitted independently within 16 months from the priority date or prepared by the Receiving Office (RO) for an additional fee and sent to the International Bureau (IB).
4. Who is Eligible to File a PCT Application?
A PCT application can be filed by either a natural person who is a resident or citizen of a Contracting State or a legal person established under the national law of a Contracting State or having a valid industrial or commercial establishment in a Contracting State.
5. The International Phase of the Application
The international phase of the patent application comprises five distinct stages, including three mandatory steps and two optional ones:
- International Application Submission and Initial Processing. This involves the preparation of application documents by the applicant, payment of necessary fees, and filing of the application with the Receiving Office (RO). The application is assessed for compliance with the PCT’s language, form, and content requirements. If non-compliant, the applicant is asked to rectify discrepancies within two months. Once approved, the RO assigns an international filing date and forwards application copies to the International Searching Authority (ISA) and the International Bureau (IB).
- International Search Report and Communication. Following the selection of the ISA at the time of filing, the authority conducts the international search and prepares the international search report along with a written opinion. Not all claims are subject to this search, with certain categories (such as scientific theories, plant and animal varieties, business methods, medical procedures, information presentation, and certain computer programs) exempted. After receiving the report and opinion from the ISA, the applicant may modify the claims under Article 19.
- International Application Publication. This occurs 18 months after the priority date, although early publication can be requested for a fee. The publication is electronic and in the application’s original language. Each published application receives an international publication number.
- Supplementary International Search Report. Conducted by one or more ISAs different from the primary one, this additional search expands the language and technical scope and minimizes the risk of missing prior art in the national phase. A request for this search should be submitted in either English or French to the International Bureau before the 22nd month from the priority date.
- International Preliminary Examination: Carried out under Chapter II of the PCT, this examination concludes with the creation of an international preliminary report on patentability by one of the International Preliminary Examining Authorities (IPEA). This examination provides a provisional, non-binding opinion on whether the claimed invention is novel, involves an inventive step, and is industrially applicable. The applicant must make a demand within a specified timeframe and furnish the necessary documentation if the application is amended under Article 34.
The international preliminary report, along with the international search report and the supplementary international search report, is forwarded to the national (or regional) offices where the applicant intends to seek patent protection.
6. Transition to the National Phase
Upon completion of the international phase, additional actions are necessary within each national or regional office where the applicant seeks patent rights based on the international application. Consequently, the applicant must settle the requisite national or regional fees with the relevant offices, supply necessary translations, and assign an appropriate representative.
Non-compliance within the stipulated timeframe could render the international application invalid in that jurisdiction. Subsequently, the national or regional offices scrutinize the application and determine whether to approve a national or regional patent in accordance with the local law of the chosen state.
As the transition to the national phase can occur at varying times across different offices, an international application might concurrently be in the international phase for some states and the national phase for others. In situations where the examination has commenced at a specific office in the national phase, any action in an international application that remains in the international phase will not impact the proceedings at that office.
7. Fees for Filing a PCT Application
The process of filing a PCT application involves various costs. They can significantly vary depending on the applicant’s country of origin. A detailed list of these costs is updated and provided by the WIPO in the documents available here.
Apart from basic fees, this resource provides a broad spectrum of information, including specific details on the methods available for payment, various exemptions that might be applicable, and instructions on how to navigate fee-related circumstances.
WIPO ensures that this page is continually updated with the latest information, so it’s a reliable and accurate reference for all fee-related aspects of the PCT application process.
The Patent Cooperation Treaty (PCT) is an efficient way for inventors and businesses to secure patent protection in multiple countries simultaneously. While the process may appear daunting at first, with careful planning and adherence to the guidelines provided by the World Intellectual Property Organization (WIPO), one can navigate it effectively.
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