Patent Cooperation Treaty (PCT) Applications for International Patent Protection
The system of cooperation
established by the PCT allows an applicant, by filing only one application
(sometimes referred to as a “PCT application” or an “international
patent application”), to obtain the effect and protect the option of
filing regular national applications in any or all 123 contracting states
(members to the PCT), without initially having to furnish a translation of
the application or pay national filing fees. The national patent granting
procedure and its related high costs can thus be postponed in most cases,
by up to thirty months from the original first application filing date.
Most, but not all industrialized countries are contracting states to the PCT.
Thus, do not assume that the filing of a PCT application “covers
the world.” Taiwan and Malaysia, for example, are examples of non-contracting
countries. Direct national filings would be required in such countries
where patent protection is sought. In addition to designating PCT contracting
states for subsequent national patents, an international application may
include designations for regional patents (e.g., European patent or Eurasian
patent).
Each international application is subjected to an international search carried
out by one of the major patent Offices of the world acting as an International
Searching Authority under the PCT. An international search report is thus
generated setting out the relevant prior art, and provided to the applicant.
The international application is published, along with the international
search report, by the International Bureau eighteen months after the priority
date and is then transmitted to the designated Offices and to the applicant.
Applicants will note that the U.S. practice has now been harmonized with
this 18 month publication rule, granting certain provisional patent rights
back to the publication date, for applications that issue with substantially
the same claims as were published.
If the applicant so requests, and most don’t due to recent changes
in the PCT process, the international application can also provide a full international
preliminary examination under Chapter II of the PCT carried out by one of the
Offices which act as International Preliminary Examining Authorities under
the PCT. This examination results in a report which includes a nonbinding opinion
as to whether the claimed invention fulfills the criteria of novelty, inventive
step and industrial applicability. The examination report is then provided
to the applicant.
With the international search report, and, where it has been requested, the
full international preliminary examination report, the applicant can better
assess the merits of pursuing patent protection in the designated countries
and regions. If the applicant decides to pursue patent protection, then national
filing fees, translation fees, and professional fees for foreign associate
counsel will become due. By this time (about 2.5 years after the earliest filing),
however, the applicant will likely have increased knowledge of the technical
and economic prospects of the invention, and is in a much better position to
decide whether meaningful patent protection is likely to be obtained and what
contribution it may make to the successful exploitation of the invention.
A common strategy employed by many clients is to file U.S. and PCT cases concurrently,
so that they may gain the benefit of a first or final office action in
the U.S. case, indicating the likelihood of success for filing patents
in other countries prior to undertaking those very signficant costs.
Published PCT applications may be viewed online. More information may be
obtained on the U.S. patent office website at www.uspto.gov.
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