PCT International Patent Applications
How to patent an idea internationally?
The First Stage of the patent application process is to file a provisional patent application as discussed. This secures an international filing date for your invention. The Second Stage, which is optional, is to have an International Novelty Search conducted.
The Third Stage is the filing of a complete application. This must be done before 12 months from your earliest priority date. This is generally the date your first provisional patent application was filed.
Importantly, any improvements made to your invention in the first 12 months of the process can be added to the specification that is filed with the complete application.
What is a PCT patent application?
PCT stands for Patent Cooperation Treaty. A PCT patent application is an international patent application that allows you to seek patent protection in up to 157 countries through a single application filing.
A PCT patent application will allow you to pursue patent protection by making a national phase filing in any of the 157 PCT member countries right up until 30 or 31 months after the priority date, depending on the country.
If you don't keep your rights alive by filing an international patent application then you will be limited to seeking patent protection in the countries where you have filed national patent applications.
Important considerations
It's important that you understand that you will not get an international patent (i.e. patent rights) by filing an international patent application. You will still need to file national phase patent applications before in order to be granted a patent in those countries.
The only country of significance that the PCT Treaty does not cover is Taiwan. A patent application can be filed in Taiwan alongside the PCT application if protection is sought there.
Publication of an international application
PCT patent applications are published during the international phase, at 18 months from the priority date.
Search report and written opinion
The PCT international patent process also includes an International Search and Written Opinion in relation to the patentability of your invention. If an International-Type Search was performed, a partial refund is available for the cost of the PCT International Search.
If the Examiner has raised objections in the Written Opinion, a response can be filed supported by amendments made to the claims of the patent application, if necessary, together with a Demand for International Preliminary Examination (IPE), to better position your application for acceptance. The IPE, together with an analysis of the results by your patent attorney, can give you an idea of the scope of patent protection you may be able to secure in national patent offices around the world.
During the IPE, your patent attorney can respond to the Written Opinion to attempt to have the examiner consider your invention patentable and issue a clear International Preliminary Report on Patentability (IPRP). A clear report can greatly increase the value of your IP Asset and is generally held in high regard by potential investors or licensees.
Benefits of PCT applications
- Single application covers 157 countries
- Delays expensive national phase costs for up to 30/31 months
- Provides international search and examination
- Offers flexibility in country selection
- Enhances commercial value of your invention
Next steps
After your PCT application, you'll need to decide which countries to enter for national phase patent protection. This decision should be based on your commercial strategy and market analysis.
If you have any questions related to filing a patent application, feel free to contact any one of the patent attorneys at Baxter IP.
