Washington, D.C. Location
Use of the PCT saves effort—time, work, money—for any person or firm seeking protection for an invention in a number of countries. Use of the PCT also helps the applicant to make decisions about the prosecution of the application before the various national Patent Offices in the PCT National Phase of processing. The saving arises primarily from the fact that, under the PCT, the applicant files one application—the PCT international application—in one place, in one language and pays one initial set of fees, and that this PCT international application has the effect of a national or regional application, which, without the PCT, he would have to file separately for each country or region.
The help to the applicant in the PCT National Phase prosecution of the application follows from the “advice” he obtains from the PCT international search report, a report which is established for each PCT international application, according to high, internationally regulated standards, by one of the Patent Offices that are highly experienced in examining patent applications and that have been specially appointed to carry out international searches.
If the applicant files a demand under Chapter II, PCT international preliminary examination is carried out on the basis of the PCT international search report and the written opinion of the PCT international Searching Authority, and concludes with the PCT international preliminary report on patentability (Chapter II of the PCT). The additional benefit for applicants of filing a demand for international preliminary examination is that it provides the applicant an opportunity to enter into a dialogue with the examiner at the PCT international Preliminary Examining Authority and to possibly amend the PCT international application in order to influence the content of the PCT international preliminary report on patentability (Chapter II of the PCT).
By the single act of filing an international application under the PCT, it is possible to secure the very effect that, without the PCT, would require as many filings of separate applications as there are countries or regions in which the applicant seeks protection. The filing of an international application takes place in one of the languages accepted by the Office with which the application is filed; for many applicants that will be the language, or one of the languages, used by the national or regional Patent Office of, or acting for, their country.
The PCT international application is filed in a single place; it is generally filed at the national Patent Office of the applicant’s country or at a regional Patent Office acting for the applicant’s country, or it may be filed direct with the PCT international Bureau in its capacity as a receiving Office under the PCT.
There is a prescribed form for the PCT international application. This form must be accepted by all designated Offices for the purposes of the PCT National Phase, so that there is no need to comply with a great variety of widely differing formal requirements in the many countries in which protection may be sought.
The international fees payable in respect of the filing of an international application may be paid at one time, at one Office and in one currency. The costs and possible complications connected with the payment, on filing, of many fees in many countries, and generally in different currencies, are thus avoided.
Before the applicant goes to the effort and expense of having translations prepared, paying the national or regional fees and appointing agents in the various countries, his views are able to mature to a greater extent than would be possible without the PCT, not only because he has more time, but also because the PCT international search report, the written opinion of the PCT international Searching Authority, and the PCT international preliminary report on patentability (Chapter II of the PCT) constitute a solid basis on which he can judge his chances of obtaining protection. Any patents subsequently granted on the application by the designated or elected Offices can be relied on by the applicant to a greater extent than would have been the case without the benefit of the PCT international search report, the written opinion of the PCT international Searching Authority and the PCT international preliminary report on patentability (Chapter II of the PCT). Moreover, because of the longer time the applicant has for making decisions, he is better placed to assess the technical value and economic interest of patent protection and to select the particular countries in which he desires to continue seeking protection for his invention. As a result, substantial savings can be made in both translation and filing costs for those countries which are no longer of interest to the applicant.
If an international application is filed in a language which is not both a language accepted by the PCT international Searching Authority which is to carry out the PCT international search and a language of publication, it needs to be translated into an appropriate language shortly after filing, but all the translations required by the Offices of or acting for the countries in which the applicant ultimately wishes to obtain protection need to be prepared only much later.
Fees payable to national or regional Patent Offices similarly become due later than they do without the PCT, and only in the case where the applicant decides to go ahead with the processing of his international application at the national or regional Patent Office.
Since 1 April 2002, the applicable time limit for entering the PCT National Phase is 30 months from the priority date (or even later in some cases) for all Offices except those (9 at the time of printing of this Guide) in respect of which the former 20-month time limit remains applicable unless the applicant files a demand for PCT international preliminary examination before the expiration of 19 months from the priority date, in which case the 30-month time limit (or even later in some cases) will also apply.
An international search report which is favorable from the applicant’s viewpoint strengthens his position vis-à-vis the various national or regional Patent Offices, and his arguments for the grant of a patent by those Offices are likely to become more convincing. This is even more true in the case of a favorable PCT international preliminary report on patentability under either Chapter I or II, which contains far more material on which to base an opinion on the chances of obtaining patents than does an international search report.
If the PCT international search report and the written opinion of the PCT international Searching Authority are partly favorable and partly unfavorable, the applicant can modify his claims so as to maintain only those which are likely to result in the grant of a patent. If the PCT international search report and the written opinion are unfavorable, and the applicant consequently decides not to proceed any further, he saves the cost of having the application processed in the various countries.
Important other advantages resulting from use of the PCT route consist, among other things, in savings in the procedure before the designated Offices (for instance, there is no need to provide each Office with original drawings, or certified copies of the priority application, there is a reduction in national fees in several countries and the European Patent Office, etc.).
The PCT System offers many advantages, however, the procedural requirements and application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on the PCT, consult a registered patent attorney qualified to assist you in international patent filing matters.