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International Patent Protection via the Patent Cooperation Treaty (PCT)
An applicant that does not take advantage of the PCT is required to submit individual applications to patent offices in each jurisdiction in which they wish to acquire patent rights, with each of these filings being subject to fees in different currencies and to a strict 12-month deadline from the first filed application. This means that in order to benefit from the priority of the first filed application for the invention, any subsequent application must be filed within 12 months. An application filed after 12 months will not be able to claim the earlier filing date, and its eligibility for a patent will be considered as of the actual date of filing of that application and not the date of filing of the first application for the invention.
Although only one application is required, an applicant that has filed a PCT application is still required to prosecute the application in each individual jurisdiction – the PCT does not amount to an application for an international patent.
The process can be broken down in two phases, the international phase and the national phase, both of which are set out in more detail below.
The International Phase
To initiate the international phase, the PCT application is first filed with a national or regional patent office or with the World Intellectual Property Organization (WIPO). The PCT application can be filed as a first application for an invention, or within 12 months of another application for the same invention from which priority is claimed.
Since only one application is filed, one advantage of the PCT is that only one set of formal requirements needs to be complied with. Individual countries cannot reject an application that complies with those requirements on formal grounds. The PCT application is also filed at this stage in only one language and is subject to only one set of fees in a single currency.
After filing, the PCT application is transmitted to an International Searching Authority (ISA) and to the International Bureau (if filed with a national or regional receiving office rather than WIPO). The ISA then conducts a search for prior art which may influence the patentability of the invention applied for.
The contracting states to the PCT have appointed several national patent offices as ISAs, and the ISA that conducts the search will depend on the receiving office with which the application is first filed. If filed with the Canadian Intellectual Property Office (CIPO), that same office will serve as the ISA.
The results of this search are provided in an International Search Report (ISR) and specific comments on patentability are included alongside the report in what is called the Written Opinion of the ISA. These include comments on novelty, inventiveness (also called non-obviousness), utility (also called industrial applicability), and unity of invention. The ISR and Written Opinion must be established no later than 9 months from the priority date of the application.
The search report and opinion provide useful information on the potential patentability of your invention and may help you decide whether to continue with your application, or in which countries to seek protection, or flag ways in which your application may be amended and strengthened in light of the prior art. It may also help gauge the investment your subsequent national phase applications will require.
If your application is objected to in this phase, this may signal that your national phase applications will also be objected to. The professional fees associated with responding to objections from each individual patent office in which you seek protection may be significant.
Although valuable, the ISR and Written Opinion are not binding on any of the national or regional patent offices, which may or may not share any concerns expressed therein. However, the ISR and Written Opinion are among work products which may be relied upon by an applicant when requesting accelerated examination via the Global Patent Prosecution Highway. In short, this program enables applicants to request accelerated examination in the national phase on the basis of earlier favourable consideration of the application by other offices.
With the issuance of the report and opinion, applicants are given one opportunity to amend the international application, an opportunity which is available for 16 months from the priority date, or two months from the transmittal date of these documents, whichever expires later. If it is believed that the ISA’s comments may be echoed by the national patent offices, an amendment in this phase can serve to pre-empt this, and potentially eliminate the need for back-and-forth correspondence with these national offices, resulting in significant savings in professional fees paid to local counsel in these countries to respond to and send such correspondence.
The next stage of the international phase is optional. The applicant may make a request for international preliminary examination. International preliminary examination gives the applicant an opportunity to respond to the comments of the ISA provided in the Written Opinion, amend their application, and receive a second assessment of patentability in reply.
The international preliminary examination can serve as a further verification of patentability before committing to national phase entry. However, the results of the international preliminary examination, like the results of the ISR and Written Opinion, are not binding on the national patent offices.
The applicant may also optionally request a supplementary international search. This is a request for another ISA, apart from the authority that conducted the initial search, to conduct an additional search for prior art which may impact the invention’s patentability. The first search may not identify all relevant references owing to linguistic limitations and the large number of patents, applications and publications in different languages around the world.
A final, non-optional stage of the international phase is the publication of your application, which is made available to the world online 18 months from its earliest filing date. At the same time, the ISR, Written Opinion, and any amendments made subsequent will also be published. Your published application may then be cited as prior art against your competitors, should they file for a similar invention.
Although rare, once a PCT application is published, third parties may submit what are referred to as “third party observations” in respect of the application to WIPO if there is prior art which they wish to bring to the attention of the offices examining the application. The prior art cited in a third party observation should be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step (i.e., whether the invention is patentable). Third party observations can be submitted up to the expiration of 28 months from the priority date of the application and can be submitted anonymously but a third party can only submit a single third party observations and only ten total observations can be received in a given application. The applicant can choose to respond to third party observations. Any such comments are made available on the WIPO patent database.
National and Regional Phase
One major advantage of filing a PCT application is that you are able to further delay your choice of jurisdictions in which to protect your invention. Under the Paris Convention, a multinational treaty with 179 contracting states today, you would have 12 months from the filing of your first application anywhere in the world to file in subsequent countries with a claim to the first filing date. The PCT, on the other hand, generally allows you to delay any national applications up to 30 months from the priority date.
Certain states allow 1-3 additional months, subject, in some cases, to payment of a fee. Uniquely, Singapore permits extension of its 30-month time limit by as many as 18 additional months, subject to a fee, and, until recently, Canada’s deadline for national phase entry was also extendable, up to 42 months from the priority date. Recent amendments to Canada’s Patent Act have restricted the availability of this time extension. Applicants seeking the extension must show that their failure to enter the national phase within the usual 30 months occurred despite “due care” having been taken on their part.
Note that the 30-month deadline to enter the national phase is counted from the priority date, which may or may not be the date you filed your PCT application. If your PCT application claimed priority from an earlier filed national application, the 30 months are counted from that date.
All of that said, the PCT provides applicants with at least an extra 18 months to test the market and craft an international protection strategy, to acquire financing, or, relatedly, to find licensees.
A 30-month deadline to enter the national phase also represents an opportunity for the deferral or spreading out of a number of significant fees associated with the national phase. These include fees for translations, national phase entry fees, and professional fees paid to local counsel in the event that an application is objected to.
The national phase, or regional phase in the case of regional offices like the European Patent Office (EPO), follows the international phase, and although it may be delayed for as long as 30 months (or in some cases, 31 months) from the priority date, it may also be entered into sooner, once the ISR and Written Opinion have been transmitted and the appropriate actions are taken to initiate the national phase in each designated state.
To enter the national phase in any country, the applicant must pay national fees and, in some cases, file translations of the application. Once you enter the national phase in a country, that country’s patent office begins the process of determining whether they will grant you a patent for your invention.
Prosecution of a PCT application that has entered the national phase is no different from the prosecution of a national patent application not derived from a PCT application. The national phase is where the bulk of the expenditures associated with the PCT process originate.
As already alluded to, these expenditures include professional fees paid to patent lawyers or patent agents in each country to prosecute the application, national phase entry fees in each country, and the fees you may incur if the application is objected to in order to respond to and overcome these objections. In some cases, the national patent office fees are reduced with respect to PCT applications in recognition of the work already done by the ISA. For example, in the U.S., the national stage search fee is substantially lower in the event that the U.S. Patent and Trademark Office was the ISA that completed the search in the international phase.
At this stage, the PCT procedure does not differ from the way in which the prosecution and grant of a patent would proceed if based on an independently filed national application. If and when the national patent office allows your application, subject to any pre-registration requirements in that jurisdiction, your application will issue to a granted patent with the effects prescribed by the law in that country or region.
Do you have an invention that could benefit from international protection through the PCT? Contact us today for a complimentary and confidential initial telephone phone appointment with a member of our team.
