A smart move for Australian IP holders in China IP age 2.0 I went to China last month attending IP conferences and meeting with Chinese associates there. Similar to other fast-changing aspects of ...
Stage 3 : PCT International Patent Applications
How to patent an idea internationally?
To attempt to obtain patent protection in a given country, it is necessary to file an individual patent application in that country. Further, in order to maintain the priority date of a provisional application, a complete filing date in the countries of interest should be established within 12 months of the priority date. There are two options to establish this complete filing date and so to pursue international patent protection that you should discuss with your patent attorney:
- By filing a Patent Cooperation Treaty (PCT) patent or PCT International Patent Application followed by individual complete patent applications in the countries of interest.
- By filing individual complete patent applications directly in the countries of interest. If you intend on filing several individual patent applications, filing costs can add up. Since most inventors and small companies are not in a position at 12 months to afford these filing costs, Option A is the normal choice but again we do recommend that you strategise with your patent attorney. We will now explain Option A in greater detail as it is the normal path. Option B is similar to the process of Stage 4: National Phase Patent Applications.
What is a PCT international patent application?
A PCT patent application is a type of patent application filed with WIPO (World Intellectual Property Organisation). A PCT patent application establishes a filing date or maintains the priority date of your Stage 1: Provisional Patent Application in about 150 countries which are signatories to the PCT. These 150 countries include most industrialised countries, the 2 main exceptions being Taiwan and Argentina.
What are the benefits of a PCT international patent application?
- By electing to proceed with a PCT patent application, the deadline for filing individual complete patent applications in the countries of interest is delayed from 12 months by up to a further 18 months (i.e. to 30 months from the priority date). Consequently, the costs associated with these individual patent applications are also pushed back. When you proceed in the individual countries designated in your PCT patent application, these applications are called National Phase patent applications, hence the next step is called Stage 4: National Phase Patent Applications.
- If you or your prospective licensee is not sure as to the final list of countries you/they wish to pursue protection in, filing a PCT international patent application effectively buys another 18 months to make this decision.
The PCT international patent process includes an International Search and Written Opinion in relation to the patentability of your invention. If a Stage 2: Novelty Search was performed, the cost of this PCT International Search is discounted.
In light of any prior art documents identified in the International search, you may elect to have your PCT international patent application examined in a process called International Preliminary Examination (IPE). IPE, together with an analysis of the results by your patent attorney, can give you an idea of the scope of patent protection that you may be able to secure in the national patent offices around the world. During IPE, your patent attorney can respond to the Written Opinion to attempt to have the examiner consider your invention to be patentable and issue a clear International Preliminary Report on Patentability. A clear International Preliminary Report on Patentability can greatly increase the value of your IP Asset and is generally held in high regard by potential investors or licensees.