International PCT Patent Applications
11 November 2008
International PCT Patent Applications
An international patent application may be filed in English at the UK or European Patent Office (EPO) or World Intellectual Property Office (WIPO) and may designate any of over one hundred countries or regions (including the UK). A separate ‘Designation Fee’ must be paid for each country or region designated at the date of filing the application (although there is no fee for the sixth and each subsequent designated country or region).
Within 6 months of filing the international patent application, an Examiner is appointed to conduct a search through previously published patent specifications and a limited range of other literature to identify published documents relevant to the patentability of the invention. The International Search Report (ISR) listing these documents is sent to the applicant (together with copies of the documents). The ISR will include a Written Opinion on Patentability, which states whether the invention appears new, involves an inventive step and is industrially applicable. The written opinion will also detail any formal deficiencies of the application. The ISR and Written Opinion may be used when deciding whether to continue with the application or abandoning the application. The applicant may file informal comments on the written opinion and such comments may rebut the opinion and provide arguments in favour of the invention. Also, the applicant may file amendments to the claims of the application in light of the search report and the Written Opinion.
The international patent application is published at around 18 months from filing by WIPO and by 19 months the applicant must decide whether or not to request an International Preliminary Examination Report (IPER). There is no such thing as international substantive examination as there is no such thin as an international grant so these steps take place individually at the designated national/ regional offices – which means the IPER is for information only. The publication will include any amendments to the application or comments filed by the applicant.
If an IPER is requested in the UK, an International Examiner at the EPO issues a non-binding opinion on the patentability of the invention. The EPO will initially send the applicant a first written opinion (similar to the opinion issued with the Search report) indicating any shortcomings of the invention and the application. The applicant has the opportunity to file comments and amendments in response the first written opinion. The EPO will then issue the formal International Preliminary Examination Report.
By a specified date which varies from country to country, but usually 30 months from the priority date, the International Patent application must be split into separate Patent applications in each country or region in which Patent protection is desired. Various formalities must be fulfilled in each country or region and may include the requirement for a local language translation to be filed at the local Patent Office.
Once the application has been split into separate national patent applications in the countries or regions of interest, the international patent application ceases to exist. The separate or regional patent applications continue in the manner described in the other briefing papers for national or European applications.
The most up-to-date list of included countries can be found on the WIPO website. All the major industrialised countries are amongst the 150+ members.
The filing of an international patent application very effectively ‘buys’ time and the option of continuing patent prosecution in a large number of countries. This enables the high cost of international country filing to be delayed, e.g., until the commercial viability of the product has been tested in the marketplace.