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Patenting under the PCT procedure

Patent Cooperation Treaty (PCT) dated 19.06.1970 and adopted on its basis instructions and regulations establish a procedure for the International Patent System, which remains in demand for many years throughout the world.
Although this procedure does not result in a single “international” patent it reveals the obvious economic advantages: if the primary duty payment of relatively small size is made applicant has a legal deferment for the 30-31 month from the filing date of the first (priority) patent application for assessment of their financial resources, production or optimizing patent and licensing policy, finding investors, national patent representatives, the choice of countries for further patenting and determining the chances for successful receipt of the relevant national patents.

In this case the applicant has a right at the filing of a PCT application to specify the maximum number of countries for a possible getting in them a national/regional patents and the priority of the first (base) patent applications after 12 months is not lost, as in the case of patent applications filed under the national procedure, without filing International PCT application.

The preliminary opinion on the possible success or failure of the subsequent patents in separate countries or group of countries can be made by the provided by PCT “international preliminary examination” and “international preliminary search” which are held prior to the application transfer to the national/regional phase of patenting in certain countries and communities of states.

At the request of the applicant as a body conducting an “international preliminary search” the Russian Patent Office may be selected, which significantly reduces the cost of this procedure. An international application itself is filed to the national patent office (for example, Russian applicants file it to Rospatent), which acting as a “receiving office” takes responsibility for coordination of all procedural actions in the international phase, including the receipt of documents, their transfer and other forms of interaction with the World Intellectual Property Organization (WIPO).

After the transfer of the PCT application to national or regional phase of patenting, many patent offices are guided by the results of the international preliminary search and international preliminary examination received in the international phase. The result is that for the national (regional) patent offices’ experts the need for a full search of solutions in the appropriate art, which affects the patentability of the claimed invention or utility model is eliminated, due to what the application processing procedure in separate countries is significantly facilitated and terms of expertise are declining (it should be separately noted that even if the applicant takes out a patent for utility model and in some countries utility models legal protection is not provided for, it is possible to file the PCT application and in a number of such countries to achieve a patent for an invention). In addition, the legislation of a number of countries provides for a discount - reduction in amount of fees for the transfer of the international application into national phase in the presentation of preliminary international search and international expertise results.

Certain amenities are associated with the possibility of introducing in a single international phase changes to the patent application text, obvious errors, inaccuracies correction and optimization of the application text for its further consideration in a national or regional phase.

PCT application may be filed on the basis of a national application as well as without it. In the latter case, the mandatory requirement is filing of the PCT application by the citizens of the Russian Federation to the Russian Patent Office as receiving office.

Another possibility, which is provided to the Applicant, is a cancellation of the international application before it is published (within 18 months from the date of priority application filing) that allows to work further on the object and submit a new application in consideration of all the opposing sources, while maintaining the priority date.
Since international publication undertaken by WIPO it is provided a temporary legal protection for the claimed decision, which allows the Applicant, subsequently having received a patent in one country or another, to claim from persons, who started to use an invention (utility model) after the official publication, compensation for the corresponding use period of technical solutions in the appropriate country’s territory, if it is permitted by the laws of the state. International publication is also able to attract the investors’ attention, who, having been interested by the claimed decision, may decide to invest in the further invention (utility model) patenting in some countries with a view to its implementation and effective commercialization. Preliminary international search findings are published separately or together with the PCT application and are available to the public on the WIPO website www.wipo.org.

For the final decision on granting a patent, notably on the possibility of granting technical decision legal protection upon completion of the PCT international phase, the Applicant must pass into the so-called “national phase” of patenting in one or another member country of the Patent Cooperation Treaty, at own option. The term for entering the national phase shall be determined by the particular state laws and, according to the general rule, is 30 or 31 months from the priority date. After the 30-31-month period the Patent Office of appropriate state may reject the applicant to examine the application (there are, however, the member countries of the PCT, the laws of which allow the PCT applications transfer into the national phase and after the expiration of abovementioned time provided the payment of additional fees, fines is made and/or a valid reason to violate the 30-31-month period is substantiated). However, on other formal grounds an application filed under the PCT procedure in compliance with the unified requirements may not be rejected by any of mentioned agencies in a national stage of its consideration.

After the PCT application transfers into a national/regional phase of consideration in one or another country (country group) the corresponding patent office conducts a patent examination in accordance with local laws and establishing the patentability of the claimed decision makes a decision on granting a patent. Russian applicants, instead of filing a national, and later an international patent application may limit themselves to filing a PCT international application and in due time enter the national phase of patenting in the Russian Federation by a simple procedure. In this case, in respect of an invention (or a utility model) a single priority is established, time for the application documents preparation is saved and expenses are cut down.

Given that there are different strategies of foreign patents the International Patent System has a number of obvious advantages and is chosen by the innovative industries leaders in order to optimize the patent law protection of their developments abroad.