An international patent application usually refers to a patent application under the Patent Cooperation Treaty (PCT), which has over 150 member countries worldwide. However an PCT application under the PCT does not result in a “PCT patent.” There is no such thing. Instead, the PCT provides a means whereby an applicant can file a PCT application and ultimately have it accepted as a patent application in the various PCT member countries. This removes the task of filing a separate patent application in each country in which an applicant seeks patent protection. The PCT is administered by an international body, the World Intellectual Property Organization (WIPO).
A PCT application goes through two phases:
- an international phase; and
- a national phase.
After the filing of a PCT application, the PCT application enters into an international phase which in most cases lasts until 30 months from the applicant’s priority date. The priority date can be the filing date of the PCT application (i.e. the international filing date), or it can be up to 12 months earlier if the PCT application claims priority to an earlier application (priority claims to be addressed in a different article).
During the international phase, the applicant has some time before having to make a decision about which member countries to seek patent protection in. The international phase is followed by the national phase in which the applicant actually uses their PCT application to seek patent protection in selected ones of the individual member countries. What follows is a brief discussion of the these two phases.
During the international phase, an international search authority (ISA) conducts a search of the prior art and provides the applicant with an international search report. The ISA are members states that are authorized to produce an international search report. Depending on the country in which the applicant files their PCT application, they may have a choice of one or more different ISA’s. The international search report is published by the International Bureau.
In addition to an international search report, the ISA issues a non-binding written opinion that addresses whether the claimed invention is novel, involves an inventive step (e.g. is non-obvious) and whether the application complies with PCT rules and regulations. The international search report and the written opinion may be referred to by individual member countries when evaluating the PCT application in the National Phase.
After the expiration of 18 months from the priority date, the PCT application is published by the International Bureau.
After the expiration of 22 months from the priority date, an applicant may request a supplementary international search from an ISA different from the ISA that conducted the original international search report and written opinion.
An applicant may demand an otherwise optional international preliminary examination (IPE) by an international preliminary examination authority (IPEA). The demand may be made by the later of either
(a) 3 months from the transmission date of the international search report and written opinion or (b) 22 months from the priority date.
The demand results in an international preliminary report on patentability (IPRP) by the IPEA. From an applicant point of view, the demand and IPRP provide an opportunity to respond to or correct any alleged deficiencies noted the international search report and written opinion. A more favorable IPRP may then put the application in a stronger position for entering the national phase.
After the expiration of 30 months (there are exceptions with shorter or longer periods that are outside the scope of this article), an applicant may enter the national phase in one or more selected member states. Patent proceedings in the national phase are conducted in the patent offices of the selected member states. This may result on one of more national or regional patents.