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McNeely, Hare & War LLP
5335 Wisconsin Ave, NW, Suite 440,
Washington, DC 20015
(202) 274-0214

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Princeton, NJ Location

McNeely, Hare & War LLP
12 Roszel Road, Suite C104,
Princeton, NJ 08540
(609) 240-2533

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Important additional advantages for applicants wishing to protect their inventions in countries party both to any of the various regional patent treaties and to the PCT result from combined use of the PCT system and those regional systems. Not only is the PCT fully compatible with the regional patent systems, but there are possibilities for advantageous combined Use of both kinds of system by the applicant, irrespective of the country in which he files. The following paragraphs deal with the combined use of the PCT with the regional patent systems under which patents may be obtained via the PCT, namely, the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement, via the so-called “ARIPO-PCT route,” “Eurasian-PCT route,” “Euro-PCT route” and “OAPI-PCT route.” In the case of the European Patent Convention, it is also possible to obtain patents through combined use of that Convention and the PCT in the States to which a European patent may be extended.

Applicants filing a PCT application and wishing to obtain protection in countries party to any of those regional patent treaties obtain, from their PCT application filed, for example, with the Japan Patent Office or with the United States Patent and Trademark Office, the effect of a simultaneous filing with each regional Office concerned for the purposes of obtaining a regional patent. In such a case, before taking any action outside his country, the applicant can safely wait until the results of the PCT search procedure (and, optionally, of the PCT international preliminary examination) are known and also make full use of the extended period by the end of which a translation of the PCT application, if it was not filed in one of the official languages of the regional Office must be submitted and an agent appointed for the procedure before that Office.

An applicant may file a PCT application with his own national Office as receiving Office, even at the very end of the priority year, and still obtain an immediate automatic filing effect with each of the regional Offices concerned. A further advantage is that, at the time of filing the PCT application, the applicant pays only one initial set of fees. The four regional designations which are presently possible cover more than 50 PCT Contracting States. If, on the other hand, the applicant chooses to file separate regional patent applications on the basis of his first application with his national Office, he will, by the end of the priority year, have to comply with all the requirements of each of the regional treaties as to formalities, fees and appointment of agents.

Similar advantages are offered by use of the ARIPO-PCT, Eurasian-PCT, Euro-PCT and OAPI-PCT routes in the reverse direction. In other words, a national of a State party to one of the regional patent treaties or of one of the States to which a European patent may be extended may, instead of filing separate patent applications with his regional Office and, for instance, the Japan Patent Office and the United States Patent and Trademark Office, choose to file, on the basis of a national application or as a first application, an PCT international application under the PCT containing the designation of all PCT Contracting States for the purposes of obtaining, where applicable, both regional and national patents.

A further advantage of the Euro-PCT route is the possibility of making use, where available, of the procedure for extension of European patents. Agreements on extending the protection conferred by European patents have been concluded between the European Patent Organisation and a number of States which are not party to the European Patent Convention. Provided that the PCT international application contains a designation for a national patent of the State concerned and also a designation for a European patent the applicant may avail himself of the Euro-PCT route with a view to extending to that State a European patent subsequently granted on the basis of the PCT international application.

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.