Patent Knowledge: International patent applications and the PCT

Each country has its own patent system, and no authority can issue a patent enforceable in any other country. Because today’s increasingly global economy demands global cooperation to protect intellectual property rights internationally, 18 states signed the 1970 Patent Cooperation Treaty (PCT). The treaty provides a global framework for entities to easily preserve their intellectual property rights in every state signed onto the treaty. Patent cooperation treaty members comprise 146 states, including all large industrialized countries. Several notable states are not members of the PCT including Taiwan, Saudi Arabia, and Argentina.
 

 

Standardized Applications

Most notably, the treaty establishes a standardized patent application that allows applicants to file in every member country. This international application replaces the need to file individual applications to each country’s patent authority, but does not automatically provide patented protection for the invention the application describes. A successfully completed international patent application functions as a national or regional application for each of the member patent authorities, but each authority may require fees or other materials before granting a patent. In essence this allows inventors to obtain a priority date in all of these countries, but they must pursue the application with individual authorities to obtain enforceable patents. In countries where applicants do not pursue national or regional patents, the international application ceases to have the effect of a national or regional application after 30 months from the application’s first priority date.

Filing

Inventors may file an international patent application with a certified Receiving Office, most often one of the patent authorities of a PCT member state. In America, for example, the USPTO functions as the PCT receiving office. This office must then submit the PCT application must collect fees, collect necessary information from applicants, and make any minor corrections. The International Bureau, located at the World Intelectual Property Organization headquarters in Geneva, Switzerland maintains a master file of all submitted patent applications, and serves as the published of these applications to its member states. The International Bureau can also function as a receiving office. Next, the receiving office hands the application to an International Searching Authority, one of a select number of patent authorities worldwide capable of conducting a required prior art search and providing a search report including a recommendation of patentability.

Priority

Filing a PCT application before filing a national application gives priority as of the date the PCT application was filed. If an application is first filed with a national authority, as is often the case in America with the USPTO, the PCT application can claim the priority date of the original national application. Inventors should note, however, that the 30 month deadline counts from the first priority date of the invention. For example, if a company files a US patent application, and twelve months later files a PCT application which claims priority of the US application, the PCT application will now only be effective for 18 months.

Applicants can also take advantage of the prior art search performed for each PCT application. Many PCT member states will rely solely on the International Search Organization report, so that applicants need not pay for prior art searches in each country they wish to pursue the application. On the other hand, the applicant may elect to perform a double prior art search: a prior art search performed by a national patent authority on top of the International Searching Authority. This type of double search may be more costly for the applicant, but makes a stronger case for patentability.