PROCEDURE FOR PCT APPLICATION FOR PATENT FOR INVENTION
- Filing of a PCT application
This type of application contains: the request for an international application for patent; the complete description of the specific invention, disclosing the technical essence and its advantages so that it can be performed by a person skilled in the art; at least one or more patent claims that determine the scope of the sought protection; diagrams, drawings, tables, if necessary for the easier perception of the invention; as well as an abstract. The PCT application is submitted to the receiving office by the applicant or directly to the World Intellectual Property Organization (WIPO) in Geneva. At this initial stage of submission of the application, a state fee is due, which is for filing and research. If necessary, an additional fee is charged for each page over the 30th of the description of the PCT application. Most receiving offices also require a fee for forwarding the request to WIPO. This fee is defined individually and is different for each office. In some cases, when the applicants meet certain requirements set out in the PCT, the international fee for filing an application may be reduced.
- International search, receipt of an international search report and a preliminary opinion related to the patentability of the invention
An important element of the PCT application procedure is the international search report. This is because it gives us a documentary information about the prior art with materials that have been available to the international research body. These materials are essential because they have been relevant for the evaluation of the mandatory criteria for novelty and inventive step of the invention. The search report is based primarily on the specified patent claims, but for its contents are also of importance the description and all drawings contained in the submitted PCT application. The report may be accompanied by a non-binding initial opinion on the patentability (registerability) of the invention. Such an opinion, made on the basis of the search report, gives us initial information on whether the international patent application for an invention meets the requirements of the PCT system. Both the international search and the initial opinion are sent to the applicant (or the authorized patent attorney) to evaluate the results and decide on the further action - whether to continue the international PCT application procedure with the entry into the national (regional) phases. The international search and the initial opinion in practice provide the applicants with the initial information, on the basis of which they get an impression of their chances of obtaining international protection for their inventions.
- Possible changes in the patent claims by the applicants
Once the report of the international search has been received and the applicants have been thoroughly informed about the results, they have the opportunity by their decision, to make changes only once in the patent claims of their patent application. At this stage of the procedure, the remaining parts of the international PCT patent application cannot be changed.
- Publication of the international PCT application for patents for inventions
The publication of the international PCT patent application is made in the WIPO Bulletin, which is now only in electronic form. This publication must contain: the description of the invention, the patent claims, all drawings, schemes, graphics, the abstract. It is done immediately after the expiration of 18 months from the priority date of filing of the international PCT application or from the date of the earliest priority (if claimed). After the publication, the application becomes public and is already part of the existing state of the art. From the date of publication of the international PCT application, temporary protection of the invention may also be granted. This is possible only for the countries designated in the published application for invention, provided that all national requirements are met, the main of which are translation and publication of the translated patent claims into the official language of each country, they determine the scope of sought protection.
- Request for optional supplementary international search (SIS)
There is also the possibility for the applicants to submit a request for a supplementary international search. It is carried out by another international independent search authority (ISA). The purposes of such a supplementary search for patent purity is a broader panorama of the prior art, which may not have been found for various reasons during the initial international search. Such supplementary international search shall be conducted for a fee determined by the relevant international search authority.
- Optional request for an international preliminary examination
In addition to the above, the applicants have the option of requesting a preliminary examination of the submitted international (PCT) applications by the International Preliminary Examining Authority (IPEA). This body prepares a preliminary international report on the patentability (registerability) of the invention. The report of the international preliminary examination gives non-binding opinion on the existence of a novelty, an inventive step and the industrial applicability of the invention. It provides the applicants with an additional information on the chances of their patents being patented. On its basis, it can be assessed whether it is reasonable to continue with the procedure and enter the national phases for these countries. The request for this expertise is entirely at the choice of the applicants. At that time, they have an additional second opportunity to make changes in the patent claims, as well as the first opportunity to change the description of the patent and the drawings. A fee is due for this international preliminary examination.
- Entering national/regional phases of PCT
The international phase of the PCT application must be completed within about 30-31 months from the priority date of filing of the application (in case of claimed priority - from its date). Thereafter, the international patent application is transformed into national (regional) patent applications by entering national (regional) phases before the relevant local patent offices. They, in turn, protect the invention by taking the responsibility for granting the patent. At this stage of the procedure, the applications are examined independently by the patent office of each of the designated countries, which is done in accordance with the national (regional) patent law. The costs of entering the national (regional) phases of the PCT application are relatively high due to the significant number of fees. They are due to each national (regional) patent office and include: for the translations of the patent description of the application into the relevant working languages, as well as for fees of local Industrial Property Representatives or patent attorneys. In general, the costs depend mainly on the number of the designated countries of interest for the applicants. It is important to note that the period of 30-31 months is also final deadline for implementation of the steps for entering the national (regional) phases of the PCT applications. In case that the applicants do not carry out these necessary actions within the prescribed period in each patent office of interest, the International (PCT) patent application will cease to be valid as a national patent application in respect of those countries and the protection of the invention in them will not be possible.
NOTE: All stated deadlines are from the priority date of filing of the application and are approximate.