International patent applications

The Patent Cooperation Treaty (or PCT) is a system operated by the World Intellectual Property Office (WIPO) that enables an applicant to file a single “international” patent application that undergoes a central search (and an optional examination) procedure.  The main advantages of the PCT are that it enables the applicant to prosecute a single application in a single language, whilst deferring the point at which a decision has to be made about the countries in which a national patent is needed.

When filing overseas, it is usually necessary to file within 12-months of the “first” application’s filing date in order to “claim priority” (effectively, backdate the later application to the earlier application’s filing date) and thereby avoid “self-collision” (the earlier application being counted as novelty-destroying prior art against the later application).  However, in the case of a PCT application, the applicant only needs to file a single PCT application within the 12-month priority period, and can decide where to convert the PCT application into national regional applications up to 30 or 31 months from the first application’s filing date.  This provides an additional 18-months’ breathing space, during which time, the applicant’s commercial situation may be more amenable to the substantial costs of multiple overseas applications.

The PCT application procedure is quite regimented, and involves the following main stages:

  1. Filing
  2. International Search
  3. Amendment (voluntary)
  4. Examination (voluntary)
  5. Reply to Examination (voluntary)
  6. National phase

Besides professional fees, there are various official fees payable for a PCT application, which are:

  • The filing fee (paid to the office that processes the application)
  • The search fee (paid to the patent office that searches the application)
  • The transmittal fee (paid to the office that receives and forwards the application to WIPO)

If the international preliminary examination procedure is undertaken, then there are two further fees to pay, namely:

  • The International Preliminary Examination fee
  • The handling fee

The deadline for filing a PCT application is 12-months from the filing date of the first application from which priority is claimed.

If you wish to make changes to the patent specification (compared with the priority application) this is best done at the time of filing because no amendments can be made until after the International Search Report has been drawn-up.

Once the application has been filed, the receiving office forwards a copy of the application to the World Intellectual Property Office (the “Record Copy”) and another copy the International Searching Authority (the “Search Copy”).

Within 3-4 months of the PCT filing date, the International Searching Authority draws-up the International Search Report (ISR), which will be sent to us.

It is possible to file a voluntary response to the Search Opinion appended to the ISR.  This would normally include voluntary amendments and reasons explaining why the invention is patentable in spite of any negative findings by the International Searching Authority.

If you are intending to submit the application for International Preliminary Examination, then making some voluntary amendments and/or filing arguments explaining how and why the invention is different to the prior art may facilitate the procedure later on.

The applicant also has the option to request that the international application undergoes a central examination procedure.  This is an entirely optional procedure, and the status of the application is unaffected by whether or the application is examined in the “international phase”.  The main advantage of requesting international preliminary examination (IPE) however, is that it allows the application to be amended to overcome any potential novelty and/or inventive step objections that might be raised during the “national phase” later on.  This may reduce costs in the long-run.

The national patent offices, later on, are not bound by the findings of the International Preliminary Examination procedure, so there is no guarantee that a favourable International Preliminary Examination Report (IPER) will be mirrored, or accepted, by the examiners of the national patent offices later on.  However, in many cases, such as before the European Patent Office, the international examination procedure is very persuasive, so this can help to speed-up the procedure later on and/or to reduce costs.

Ultimately, you will need to decide (based on the outcome of the search) if you want to incur the cost of examination in the hope that it will reduce costs later on, or whether you’d prefer to defer costs at that stage.

The “international phase” effectively ends with the issuance of the International Preliminary Examination Report (IPER) – if International Preliminary Examination was requested; the International Preliminary Report on Patentability (IPRP) – if International Preliminary Examination was not requested.

The IPER/IPRP usually forms the “start point” for any search/examination procedure carried out by national patent offices in the “national phase” (in individual countries, such as the UK, US, Japan etc.) or the “regional phase” (for groups of countries, such as a European Patent Application) of the PCT.

At this stage, it is usually a good idea to review the IPRP/IPER to see if the Examiner considers any subject matter to be patentable. If not, the IPRP is just a preliminary opinion, and the merits of the application will be considered again during the national/regional phase.  The issuance of the IPRP essentially closes the procedure between the applicant and the World Intellectual Property Office (WIPO).

The next stage in the procedure is to convert the PCT application into a bundle of national/regional patent applications.  The deadline for doing this is country/region specific.   There are essentially two groups of PCT countries, namely: those that require national phase entry within 30-months of the filing/priority date; and those that require national phase entry within 31-months from the filing/priority date.  The time limits depend on the country, and whether or not International Preliminary Examination (“Chapter II”) has been requested.  The deadlines can be found here.

You may note that certain key countries, such as France and Italy, do not appear on the main list of PCT contacting states.  However, these countries are members of the European Patent Organisation, so patents can be obtained in those countries nevertheless, by entering the European regional phase of the PCT at the 31-month stage.  Also, certain countries above, such as Germany and Spain require direct entry into the national phase at 30-months, but these countries are also EPC contracting states so it is still possible to defer by a month by applying for a European patent at the 31-month stage instead.

For further information on the UK national phase, please click here, or on the European regional phase, please click here.