Patents are territorial rights, meaning that to acquire patent protection with a broad geographic scope it can be necessary to file multiple applications. Consideration of geographical scope can be a daunting prospect, particularly for new inventors unfamiliar with the patent system and wary of costs.
There are several systems in place that can support applicants looking to acquire patent protection across several territories. One such system is the Patent Cooperation Treaty (PCT) which provides an international patent application that unifies filing procedures across contracting states. The PCT is administered by the International Bureau of the World Intellectual Property Organization.
How it Works
Rather than filing multiple patent applications across different territories, an applicant may file a single international application, commonly referred to as a “PCT”.
As part of the PCT procedure, an International Searching Authority will undertake a prior art search for the claimed invention. The International Searching Authority will then provide an International Search Report and Written Opinion, which can provide an initial indication of patentability.
The applicant may, optionally, request International Preliminary Examination with the goal of ideally obtaining a positive opinion on patentability before facing examination in national offices. This opinion is preliminary and non-binding, but can nonetheless place the applicant in strong position prior to dealing with national offices.
At around 30 months from filing (with different national offices occasionally deviating from the 30 month deadline), the international application enters the “national phase”. At this point, the PCT effectively “branches off” into individual national applications which undergo examination in national offices.
Advantages of the PCT
In addition to the general advantages of a unified filing procedure, the PCT offers other benefits over making initial filings at national offices.
The International Search Report and Written Opinion can offer an initial impression of patentability which can inform the strategic approach for national phase entry.
For example, a negative opinion may indicate that acquiring patent protection would be unlikely, thereby possibly saving on costs that would normally be required for filing in national offices. On the other hand, a positive opinion can offer some confidence going forward.
Using the optional process to request International Preliminary Examination can help put the application in a better shape for national phase entry, and can hopefully provide a positive opinion before moving forward. Although not guaranteed this can make the process run smoother in national offices, thereby hopefully saving on prosecution costs and leading to a faster path to grant.
The PCT effectively defers costs for filing in national offices which can be helpful in managing cash flow.
The PCT also provides around two and half years from filing to determine which territories are of interest, which can conceivably vary over time, for example as the product is developed, or different markets are entered.
Conclusions
The PCT offers advantages over directly filing in national offices. However, in some cases there may be better options and your patent attorney will be able to advise appropriately at the relevant time.
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!