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Patent Cooperation Treaty (PCT) There is an International Patent Cooperation Treaty (PCT) that has been adopted by most Countries throughout the world, that enables one to file a single international patent application and later convert the application into national, or regional applications to obtain patent protection in many countries. An International Patent application may be filed in English at the UK or European Patent Office and may designate any of over one hundred and fifty 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).When filing under the PCT one can designate all the European Patent Convention countries as a single entity. At a later stage one can convert the European Patent into national patents in one or more of the designated countries. The PCT route leads to a national patent in each selected country. Shortly after 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 which may be relevant to the patentability of the invention. The International Search Report listing these documents is sent to the applicant (together with a copy of the documents). The International Patent application is published (at about 18 months after the priority date , and by a specified date the applicant must decide whether or not to request International examination and pay the International Examination fee. If International Examination is requested, an International examiner is appointed at the European Patent Office and issues a non-binding Opinion on the patentability of the invention. By default, the International Examiner will draw up a non-detailed Written Opinion based solely on the International Search Report without substantive input. Two-thirds of the International Examination fee will be refunded at the time when the International Preliminary Examination. By a specified date which varies from country to country, but usually 30 months from the priority date in many countries (or 31 months in others and up to 42 months in Canada) the International Patent application must be converted into separate national patent applications in each country or region in which patent protection is desired. Various formalities must be fulfilled in each country or region and this may include the requirement for a local language translation to be filed at the local Patent Office. Having converted the international application into separate applications in the countries or regions of interest, the international patent application ceases to exist. The separate national or regional applications continue in the manner described above for national or European patent applications. Most industrialized countries are members of the PCT. 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. Overall, if one wishes to protect an invention in four or more countries, it is cheaper to use the PCT and EPC routes than separate national routes. This is because national routes involve translation into the language of the country concerned whereas, the International routes are conducted in English. The attached Tables show respectively, the procedural steps of the three routes (PCT, EPC, and National patent). Table 1 shows the approximate time scale in months for main events that are likely to incur expense, measured from the priority date (i.e. date of filing of the first British Application). Referring to Table 1, under the PCT route a single application is filed and all 169 countries are automatically designated. The initial filing costs for a PCT application is shown in the column called “immediate costs” in Table 2. Referring to the centre column of Table 1, this shows a typical National route. Some countries do not carry out the substantive examination stage. In these countries the application is accepted, subject to checking for formalities, in the form as filed and the time to obtain a granted patent is relatively short and the average cost is lower than for those that carry out substantive examination. Under the PCT, an International Search is carried out. When the results of the search are known, one can then decide whether to convert the International Application to National Patent Applications in those countries designated at the outset. One of the advantages of the PCT route is that one can have an international preliminary examination carried out based on the international search. If one is successful in overcoming the objections raised at the international examination stage, one obtains effectively a “bundle” of examined applications that can then be converted to national patent applications in one or more of the 169 countries. Each country treats the converted application as if it had been filed in that country right from the start, and may refuse or grant a patent under the national law.
© Keith Leaman 2005, 2009 Electing to convert to National filings in one or more of the 169 countries or to a European application will incur the “immediate” costs in each country as shown in the following table, where o = No cost and n = likely cost involved
o = No cost
n = likely
cost involved
Pros and ConsAn advantage of the PCT route is that one can defer payment of national costs until one has a good idea from the search results if worthwhile patent cover is likely to be obtained. Another important point is that all the countries of the PCT, (currently 169) are included from the start. Whereas, the national routes incur expenses of filing, prosecution, granting and publication and each country deals with the matter in isolation from the others. Therefore, under the national routes, one may have to conduct exactly the same prosecution or use the same arguments in different countries, suffering the problems of translation costs and multiple lawyers’ charges. Under the national routes the application may be refused and you could incur substantial costs before abandoning the patent application and then be forced to abandon the applications in other countries without being able to recover ant of the costs. For the PCT and EPC, a single British patent attorney may handle the prosecution up to the stage of converting to national applications or patents, thus minimising costs. Under the EPC and PCT the scope of protection is identical, or nearly so, in all countries, whereas it can vary in different countries under the national procedure. A disadvantages of the EPC is that if the application is rejected you lose protection in all EPC countries. A further disadvantage of the EPC is that third parties can oppose the grant of a European patent during the 9 months following publication of the grant of the patent. Under the PCT and national routes you may still be able to get limited protection in some countries, and not in others. Some countries have oppositions others do not. All patents, irrespective of the route used to obtain them, must be renewed annually in most countries. The maximum life of the patent varies from country to country, but in most countries it is 20 years. The renewal costs are not shown in Table 2. Providing the patent Application is not withdrawn, the application as originally filed will be published throughout the world approximately 18 months after filing the first British application in the form as originally filed.
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Central England Patent & Trademark Attorneys Limited Chartered Patent Attorneys, European Patent Attorneys, and British & European Trade Mark Attorneys. Registered in England Company No 7930428
© Central England Patent & Trademark Attorneys Ltd 2010.
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