- An Overview Of PCT Patent Applications
So you have a U.S. patent application that was filed less than 12 months ago and are considering seeking patent protection outside of the U.S. You may have two options. Option one is to file an application directly in each country in which you wish to seek patent protection on or before the one year anniversary of your U.S. application. If all countries in which you desire protection are signatories, option two is to file one application under the provisions of the Patent Cooperation Treaty (PCT) within the 12 month timeframe. As discussed below, we recommend that you consider the benefits of the PCT application. However, before exploring these two options and our recommendation, let's consider one fundamental aspect of patents themselves.
Territorial in Nature
As you may know, patents are territorial in nature. That is, a patent granted in a country or region is only enforceable within that country or region. For example, a U.S. patent provides patent protection in the United States of America. Similarly, a patent granted in Canada is only enforceable in Canada, and a patent granted by a regional patent office such as the European Patent Office, is only enforceable within the countries of the European Union. As such, patent protection must eventually be sought, as noted in option one, in the national patent office of any country or regional in which protection is ultimately desired.
The PCT process does not change this fundamental aspect of patents, as the PCT application does not mature into an international patent. However, the PCT application does preserve a right to seek a patent in each of the contracting states of the PCT while an applicant determines whether it is "worth the expense" of seeking patent protection in any or all of the contracting states based on at least one, and possibly two, substantive examinations by a patent office examiner. As described below, under the PCT process, the 12 month term before which the national patent process must commence may be extended to thirty (30), or even thirty-one (31), months from your U.S. filing date.
Direct National Filing
Generally speaking, the process of seeking a patent in a foreign country is similar to the process of seeking a patent in the U.S. A foreign patent application is filed and examined by the patent office of the selected country based on the rules of that country. Moreover, most foreign patent offices permit one or more opportunities for an applicant to amended and/or narrow his/her claims in pursuit of a patent.
When an applicant files a patent application directly in a country that the applicant wants patent protection, the applicant pays governmental filing fees as well as cost associated with local representation, e.g., professional fees of an attorney and/or agent authorized to practice before the patent office of the subject jurisdiction. Additionally, it may be necessary to translate the application into the national language of the subject patent office, e.g., translation to Japanese for seeking protection in Japan, Chinese for seeking protection in China, etc. These costs are incurred prior to examination and thus, before knowing whether success in obtaining patent protection is likely within the subject jurisdiction. Accordingly, it can be advantageous for an applicant to undergo substantive examination prior to paying the fees associated with national filing.
The PCT Process
As noted above, the PCT application preserves a right to file a patent application in the national patent office of each contracting state of the PCT while the application undergoes substantive examination. At a time of writing this article, there are 142 countries that are contracting states to the PCT. A current list of the contracting states to the PCT may be found under a heading "PCT Contracting States" at www.wipo.int/pct/en/index.html. While the PCT contracting states include most nations of the industrialized world, notably exceptions do exist. For example, PCT membership is limited within Latin America and South East Asia. If protection is desired in any non-contracting states, direct national filing within 12 months of your previously filed U.S. application is required.
Once filed, a PCT application undergoes a two step process. A first step is referred to as an International Phase and a second step is referred to as a National Phase.
The International Phase
Once a PCT application has been filed, the International Phase of the PCT application begins. For most applications filed with the United States Receiving Office, the applicant may choose the U.S. Patent and Trademark Office, the European Patent Office, or the Korean Intellectual Property Office to act as an International Searching Authority (ISA). The examination is conducted by an examiner from one of these patent offices. During the International Phase, the ISA undertakes a substantive examination of the application and issues an International Search Report and Written Opinion. The International Search Report and Written Opinion are typically issued by the ISA approximately 16 months from the priority date (e.g., the filing date of the previously filed US application), or about 4 months from filing the PCT application.
The International Search Report and Written Opinion provide a first look at an examiner's findings and thus an initial evaluation of the "likelihood of success" in obtaining patent protection. For example, in the Search Report and Written Opinion the patent examiner provides his/her opinion as to whether the currently pending claims of applicant's PCT application met the standards of patentability under the PCT. The report may be either favorable or unfavorable. Importantly, the Search Report and Written Opinion are non-binding on the individual contracting states of the PCT. That is, the Search Report and Written Opinion are informative as they are an examination by an experienced patent office official. However, any rejections and/or objections received during this phase may be challenged as an applicant continues to seek protection.
The International Search Report and Written Opinion note prior art documents found to be relevant by the patent examiner and further identify the claim and/or claims in the application to which they are pertinent. In short, the Written Opinion indicates whether each claim appears to satisfy the internationally accepted criteria for granting a patent, namely, PCT Article 33 criteria of "novelty" (e.g., is the claimed invention new), "inventive step" (e.g., is the claimed invention non-obvious in view of the prior art), and "industrially applicable," and may indicate defects or informalities in the form and/or content of the claims and the international application itself under the PCT articles and regulations. Additionally, the Written Opinion may include observations the ISA wishes to make on the clarity of the claims, the written description, and the drawings, or on the question of whether the claims are fully supported by the written description.
If an unfavorable report is given by the ISA, the applicant, at his/her option, may do nothing and enter the National Phase without challenging the examiner's initial findings, or may challenge the examiner's findings and seek a further examination. If unchallenged, the unfavorable Written Opinion is formalized as an International Preliminary Examination Report (IPER) that is provided to any contracting state in which the applicant elects to seek patent protection by entering the National Phase.
Alternatively, the applicant may respond to the unfavorable Written Opinion by submitting statements and/or amendments to the application under either of two options, Article 19 or Article 34 of the PCT rules. By responding to the Written Opinion, the applicant may counter the examiner's finding with respect to patentability and may correct deficiencies in the drawings and/or written description. Additionally, if the applicant chooses to amend one or more claims of the application, the applicant may require a second, substantive examination. The request for a second examination is referred to as a Demand for International Preliminary Examination.
Issuance of the International Search Report and Written Opinion commences two timeframes for response. Under Article 19 of the PCT rules, amendments are limited exclusively to the claims. The time limit to file amendments under Article 19 is two (2) months from the date of transmittal of the International Search Report and Written Opinion or sixteen (16) months from the priority date, whichever time limit expires later. Importantly, under Article 19, only claim amendments may be submitted. Applicant is not permitted to challenge the examiner's findings by arguing distinctions between the claims (as filed or amended) and the cited prior art. Accordingly, a response under Article 19 can be limited.
Under Article 34 of the PCT rules, amendments may be made to the claims, the written description, and the drawings. Additionally, arguments may be submitted challenging the examiner's findings with respect to the prior art and the claims. The time limit for filing an Article 34 Amendments is either: (A) three (3) months from the date of transmittal to the applicant of the International Search Report and Written Opinion (i.e., nineteen (19) months from the priority date of the PCT application); or (B) twenty-two (22) months from the priority date of the PCT application. However, some contracting states (e.g., Luxemburg, Tanzania or Uganda) have not adopted the 22 month date and, for these countries, the Demand must be filed within 19 months from the priority date.
Similar to U.S. patent practice, amendments made under either Article 19 or Article 34 are not allowed to add new subject matter that goes beyond the disclose of the initially filed PCT application.
In response to the Demand, the examiner would once again review the PCT application with any amendments and issue the IPER. If amendments challenging the examiners findings are submitted (e.g., Article 19 or 34 amendments), the examiner is required to consider the amended claims in preparing the IPER. As such, an applicant can receive a second, substantive examination of the claimed invention.
The National Phase
As noted above, in order to obtain patent protection in a country, the PCT application must be filed in the patent offices of designated contracting states at the end of the International Phase (30 or 31 months, as noted above). Simply stated, the National Phase includes filing patent applications individually in any country (i.e., contracting state) that the applicant designates. Once an applicant's enters the national phase, the applicant incurs the fees associated with filing, e.g., the aforementioned governmental filing fees, professional fees for local representation, and any translations.
Conclusion
While patent protection must ultimately be sought on a country-by-country basis, there can be significant benefits in seeking substantive examination of a claimed invention before incurring the costs of filing individual patent applications. Thus, we recommend that you consider filing a PCT application as a way of determining your chances of success in obtaining patent protection before incurring the significant costs of seeking widespread patent protection.
For further information on this and intellectual property in general, please visit our website and archives at www.mkgip.com.
