The PCT procedure includes:
Filing: you file an
international application with a national or regional patent Office or WIPO,
complying with the PCT formality requirements, in one language, and you pay one
set of fees.
International Search: an “International Searching Authority” (ISA) (one of the world’s
major patent Offices) identifies the published patent documents and technical
literature (“prior art”) which may have an influence on whether your invention
is patentable, and establishes a written opinion on your invention’s potential
patentability.
International Publication: as soon as possible after the expiration of 18 months from the
earliest filing date, the content of your international application is
disclosed to the world.
Supplementary International Search (optional): a second ISA identifies, at
your request, published documents which may not have been found by the first
ISA which carried out the main search because of the diversity of prior art in
different languages and different technical fields.
International Preliminary Examination (optional): one of the ISAs at your
request, carries out an additional patentability analysis, usually on an
amended version of your application.
National Phase:
after the end of the PCT procedure, usually at 30 months from the earliest filing
date of your initial application, from which you claim priority, you start to
pursue the grant of your patents directly before the national (or regional)
patent Offices of the countries in which you want to obtain them.
FILING
What is the effect of an international patent application?
In general terms, your
international patent application, provided that it complies with the minimum
requirements for obtaining an international filing date, has the effect of a national
patent application (and certain regional patent applications) in or for all PCT
Contracting States. Moreover, if you comply with certain formal requirements
set out in the Treaty and Regulations, which are binding on all of the PCT
Contracting States, subsequent adaptation to varying national (or regional)
formal requirements (and the cost associated therewith) will not be necessary.
Who has the right to
file an international patent application under the PCT?
You are entitled to file
an international patent application if you are a national or resident of a PCT
Contracting State. If there are several applicants named in the international
application, only one of them needs to comply with this requirement.
Where can I file my international patent application?
You can file an
international patent application, in most cases, with your national patent
Office, or directly with WIPO if permitted by your State’s national security
provisions. Both of those Offices act as PCT “receiving Offices”. If you are a
national or resident of a country which is party to the ARIPO Harare Protocol,
the OAPI Bangui Agreement, the Eurasian Patent Convention or the European
Patent Convention, you may alternatively file your international patent
application with the regional patent Office concerned, if permitted by the
applicable national law.
Can I file PCT applications electronically?
In the majority of
cases, applicants file PCT applications electronically. You can file PCT
applications electronically with any competent receiving Offices which accepts
such filings. Preparing the PCT application using the WIPO web service
(ePCT-filing) or the software provided by WIPO (PCT-SAFE) helps you to prepare
your applications by automatically validating the entered data and drawing your
attention to incorrectly or inconsistently completed parts. Moreover, it helps
you to manage your applications, for example, with monitoring time limits for
relevant actions. You are also entitled to certain PCT fee reductions when
filing electronically. More details about PCT electronic filing can be found at
www.wipo.int/pct-safe/en/.
What are the costs associated with the filing and processing of an
international application under the PCT? What are the costs for entering the
national phase?
PCT applicants generally
pay three types of fees when they file their international applications:
(a) an international
filing fee of 1,330 Swiss francs2,
(b) a search fee which
can vary from approximately 150 to 2,000 Swiss francs2 depending on the ISA
chosen, and
(c) a small transmittal
fee which varies depending on the receiving Office.
Because an international
patent application is effective in all PCT Contracting States, you do not
incur, at this stage in the procedure, the costs that would arise if you prepared
and filed separate applications at national and regional Offices. Further
information about PCT fees can be obtained from the receiving Offices, the Fee
Tables, the PCT Applicant’s Guide and the PCT Newsletter.
The fees you will need
to pay as you enter the national phase represent the most significant pre-grant
costs. They can include fees for translations of your application, national (or
regional) Office filing fees and fees for acquiring the services of local
patent agents or attorneys. In several Offices however, national filing fees
are lower for international patent applications than they are for direct
national applications in recognition of the work already done during the
international phase. You should also remember that in the case of all granted
patents, whether or not the PCT is used to obtain them, you will need to pay
maintenance fees in each country in order to keep the patents alive.
Are there any fee reductions available under the PCT?
PCT fee reductions are
available to all applicants who file electronically, based on the type of
filing and the format of the application submitted (see Question 7).
In addition, to
encourage the use of the PCT System by applicants from developing countries fee
reductions of 90% for certain fees, including the international filing fee, are
available to natural persons.3 This same 90% reduction applies to any person,
whether a natural person or not, who is a national of and resides in a State
that is classed as a least developed country by the United Nations. If there
are several applicants, each must satisfy those criteria.
Some ISAs also provide
for a reduction of the international search fee if the applicant or applicants
are nationals or residents from certain countries (see Annex D of the PCT
Applicant’s Guide).
Some national or
regional Offices provide for fee reductions for natural persons, universities,
not-for-profit research institutes and small and medium-sized enterprises
(SMEs) for the fees you will need to pay as you enter the national phase (see
respective National Chapters of the PCT Applicant’s Guide).
How long does the PCT process take?
You have, in most cases,
up to an additional 18 months from the time you file your international patent
application (or usually 30 months from the filing date of the initial patent
application of which you claim priority before you have to begin the national
phase procedures with individual patent Offices and to fulfill the national
requirements.
This additional time can
be useful for evaluating the chances of obtaining patents and exploiting your
invention commercially in the countries in which you plan to pursue patent
protection, and for assessing both the technical value of your invention and
the continued need for protection in those countries.
It is important to note,
however, that you do not have to wait for the expiration of 30 months from the
earliest filing date of your patent application (“priority date”) before you
enter the national phase – you can always request an early entry into the
national phase.
Since, in the national
phase, each patent Office is responsible for examining your application in
accordance with national or regional patent laws, regulations and practices,
the time required for the examination and grant of a patent varies across patent
Offices.
What does it mean to “claim priority” of an earlier patent
application?
Generally, patent
applicants who wish to protect their invention in more than one country usually
first file a national or regional patent application with their national or
regional patent Office, and within 12 months from the filing date of that first
application (a time limit set in the Paris Convention, they file their
international application under the PCT.
The effect of claiming
the priority of an earlier patent application is that a patent shall not be
invalidated by reasons of any acts accomplished in the interval, such as
another filing, the publication or sale of the invention.
In what languages can an international patent application be
filed?
You can file an international patent application in any language
which the receiving Office accepts. If you file your application in a language
which is not accepted by the ISA that is to carry out the international search,
you will be required to furnish a translation of the application for the
purposes of international search. Receiving Offices are, however, obliged to
accept filings in at least one language which is both a language accepted by
the competent ISA that is to carry out the international search and a “publication
language”, that is, one of the languages in which international patent
applications are published (Arabic, Chinese, English, French, German, Japanese,
Korean, Portuguese, Russian and Spanish). You therefore always have the option
of filing your international patent application in at least one language from
which no translation is required for either PCT international search or publication
purposes.
INTERNATIONAL SEARCH
Which Office will carry out the international search of my PCT
application?
The following have been
appointed by the PCT Contracting States as International Searching Authorities
(ISAs): the national Offices of Australia, Austria, Brazil, Canada, China,
Chile, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian
Federation, Spain, Sweden, Ukraine4 and the United States of America, and the
following regional Offices, the European Patent Office and the Nordic Patent
Institute. The availability of a particular ISA to the nationals or residents
of a country is determined by the receiving Office where the international
application was filed. Some receiving Offices provide a choice of more than one
competent ISA. If your receiving Office is one of those, you can choose any one
of them, taking into account differing requirements relating to language, fees,
etc..
What is a PCT international search?
A PCT international
search is a high quality search of the relevant patent documents and other
technical literature in those languages in which most patent applications are
filed (Chinese, English, German and Japanese, and in certain cases, French,
Korean, Russian and Spanish). The high quality of the search is assured by the
standards prescribed in the PCT for the documentation to be consulted, and by
the qualified staff and uniform search methods of the ISAs, which are all
experienced patent Offices. The results are published in an international
search report and a written opinion of the ISA on the potential patentability
of your invention (see Questions 15 and 18).
What is an international search report?
The international search
report consists mainly of a listing of references to published patent documents
and technical journal articles which might affect the patentability of the
invention disclosed in the international application. The report contains
indications for each of the documents listed as to their possible relevance to the
critical patentability questions of novelty and inventive step
(non-obviousness). Together with the search report, the ISA prepares a written
opinion on patentability, which will give you a detailed analysis of the
potential patentability of your invention (see Question 18). The international
search report and the written opinion are sent to you by the ISA.
What is the value of the international search report?
The report enables you
to evaluate your chances of obtaining patents in PCT Contracting States. An
international search report which is favorable, that is, in which the documents
(prior art) cited would appear not to prevent the grant of a patent, assists
you in the further processing of your application in those countries in which
you wish to obtain protection. If a search report is unfavorable (for example,
if it lists documents which challenge the novelty and/or inventive step of your
invention), you have the opportunity to amend the claims in your international
patent application (to better distinguish your invention from those documents),
and have them published, or to withdraw the application before it is published.
Will an international search be carried out for all international
applications?
As a rule, an
international search is carried out for all international applications. There
are instances, however, where the ISA will not be able to carry out a search.
For example, where the international application relates to subject matter
which the ISA is not required to search or if the description, claims or
drawings are not sufficiently clear for it to carry out a meaningful search. In
such cases, the ISA will issue a declaration that no international search
report will be issued.
There are also
circumstances where the ISA will issue a partial search report. This can occur
when, in the view of the ISA, the international application contains multiple
inventions but the applicant has not paid additional search fees to cover the
work required to search those additional invention(s).
What is the written opinion of the International Searching
Authority?
For every international
application, the ISA will establish, at the same time that it establishes the
international search report, a preliminary and non-binding opinion on whether
the invention appears to meet the patentability criteria in light of the search
report results. The written opinion, which is sent to you together with the
international search report, helps you understand and interpret the results of
the search report with specific reference to the text of your international
application, being of special help to you in evaluating your chances of
obtaining a patent. The written opinion is made available to the public at the
same time as the application.
SUPPLEMENTARY INTERNATIONAL SEARCH
What is the PCT supplementary international search?
Supplementary
international search permits the applicant to request, in addition to the
international search (the “main international search”), one or more
supplementary international searches each to be carried out by an ISA other
than the ISA which carried out the main international search. The additional
search has the potential of reducing the risk of new patent documents and other
technical literature being discovered in the national phase since, by
requesting supplementary search the applicant can enlarge the linguistic and/or
technical scope of the documentation searched.
What is the supplementary international search report?
The supplementary
international search report is generally similar in content and appearance to
the main international search report; it contains a listing of references to
patent documents and other technical literature which may affect the
patentability of the invention claimed in the international application.
However, it does not repeat documents which have already been cited in the
international search report, unless this is necessary because of new relevance
when read in conjunction with other documents discovered during the
supplementary international search. On occasion, the supplementary
international search report may contain more detailed explanations than those
in the main international search report. This is due to the fact that, unlike
the main international search, no written opinion is established with the
supplementary international search report, and these additional details are
helpful for a full understanding of the references listed.
INTERNATIONAL PUBLICATION
What does international publication under the PCT consist of?
WIPO publishes the
international application shortly after the expiration of 18 months from the
priority date (if it has not been withdrawn earlier), together with the
international search report. PCT international applications are published
online on PATENTSCOPE, a powerful, fully searchable database with flexible,
multilingual interfaces and translation tools to assist users and the public in
understanding the content of published applications..
Can third parties access documents contained in the file of the
international application? If so, when?
Until international
publication (18 months after the priority date), no third party is allowed
access to your international application unless you as applicant request or
authorize it. If you wish to withdraw your application (and you do so before
international publication), international publication does not take place and,
as a consequence, no access by third parties is permitted. However, when
international publication occurs, certain documents in the international
application file are made available on PATENTSCOPE together with the published
international application, for example, the written opinion of the ISA and any
informal comments on the written opinion.
INTERNATIONAL PRELIMINARY EXAMINATION
What is international preliminary examination?
International preliminary
examination is a second evaluation of the potential patentability of the
invention, using the same standards on which the written opinion of the ISA was
based. If you wish to make amendments to your international application in
order to overcome documents identified in the international search report and
conclusions made in the written opinion of the ISA, international preliminary
examination provides the only possibility to actively participate in the
examination process and potentially influence the findings of the examiner
before entering the national phase – you can submit amendments and arguments
and are entitled to an interview with the examiner. At the end of the
procedure, an international preliminary report on patentability (IPRP Chapter
II) will be issued.
The International
Preliminary Examining Authorities (IPEAs) which carry out the international
preliminary examination are the ISAs mentioned above. For a given PCT
application, there may be one or more competent IPEAs; your receiving Office
can supply details or you may consult the PCT Applicant’s Guide and the PCT
Newsletter.
What is the value of the international preliminary report on
patentability?
The IPRP (Chapter II)
which is provided to you, to WIPO and to the national (or regional) patent
Offices, consists of an opinion on the compliance with the international
patentability criteria of each of the claims which have been searched. It
provides you with an even stronger basis on which to evaluate your chances of
obtaining patents, in most cases on an amended application, and, if the report
is favorable, a stronger basis on which to continue with your application
before the national and regional patent Offices. The decision on the granting
of a patent remains the responsibility of each of the national or regional
Offices in which you enter the national phase; the IPRP (Chapter II) should be
considered by the Offices but is not binding on them.
NATIONAL PHASE
It is only after you
have decided
How do I enter the national phase?
whether, and in respect
of which States, you wish to proceed further with your international
application that you must fulfill the requirements for entry into the national
phase. These requirements include paying national fees and, in some cases,
filing translations of the application. These steps must be taken, in relation
to the majority of PCT Contracting States’ patent Offices, before the end of
the 30th month from the priority date. There may also be other requirements in
connection with the entry into the national phase – for example, the
appointment of local agents. More general information on national phase entry
can be found in the PCT Applicant’s Guide, National Phase, and specific
information concerning fees and national requirements can be found in the national
chapters for each PCT Contracting State in the same Guide.
What happens to my application in the national phase?
Once you have entered
the national phase, the national or regional patent Offices concerned begin the
process of determining whether they will grant you a patent. Any examination
which these Offices may undertake should be made easier by the PCT
international search report and the written opinion and even more by an
international preliminary examination report.
