- What is the international patent
- How to file an international patent application
- The international procedure
- Keeping the international patent alive
- Duration and protection
1. What is the international patent ↑
The international patent, known as PCT from the name of the treaty that has instituted it (Patent Cooperation Treaty) is in fact a procedure with which the patent can be basically “booked” all over the world, starting from a single procedure.
The international patent application has effect in all the states that have adhered to the PCT, which are almost all the states of the world. You can consult, only as a guide, the list of countries, which is constantly updated. The unitary procedure is managed by the WIPO of Geneva. The patent application can be filed immediately or within 1 year from the filing of a preceding identical national or regional patent, which can be an Italian patent application (so called priority). Before filing a patent it is necessary to examine thoroughly the invention and to choose how to file it. If you have not already done it, we suggest you read the section Filing a patent, which gives useful advice on the matter.
Once the preliminary analysis has been done carefully, and as always advised, with the help of a consultant expert in the field, the filing of the application can be done.
2. How to file an international patent application ↑
The international patent application can be filed with the WIPO, with the EPO or with the Italian Patent and Trademark Office, which will forward it to the international office. Only residents or those who have the nationality in one of the states adherent to the PCT convention have the right to file a PCT international patent application. In order to file the PCT application, it is necessary to fill in a series of forms downloadable from the Internet from the WIPO website, in which the information on the applicant, who will become the holder of the patent, the title of the patent, the name of the inventor and a series of other information will have to be indicated. In the international application the states in which the application wants to be valid have to be chosen, even if normally all states are indicated since their number does not affect the cost of the filing. The official languages of the PCT patent depend on the Receiving Office (R.O.) where you are authorized to file, on the International Search Authority (I.S.A.) that can be chosen and on the languages of publication foreseen. For example, the WIPO, if selected as Receiving Office, accepts any language, while the EPO (selected both as R.O. and as I.S.A.) accepts applications in English, French and German. The Italian Office (R.O.) accepts English, French, German and Italian. According to the case, a subsequent translation of the text could be requested so that the application can be accepted and searched by the I.S.A selected and subsequently published (language of publication). Such a language will also be the language of the entire procedure.
The Description, the Claims and the technical drawings have to be attached to the forms.
The Description, first of all, has to highlight the technical problem that the invention wants to solve and the advantages that derive from the use of the invention. All the main technical-constructive features of the solution proposed have to be described, with the help of the drawings attached. According to the type of invention the functioning or the procedure, with which a certain result is obtained, will be described.
The most important part of the patent are the “Claims” that have to reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not object of protection. The claims are intended to be formulated in a “waterfall-like” manner in the sense that the first one is the most important one, which encloses the core of the invention, while the subsequent ones are a sort of specification of the first one.
Also technical drawings will have to be prepared in such a way as to make understand well which is the inventive solution that wants to be protected. Therefore, it is unadvisable to attach too much detailed constructive drawings with measures and irrelevant particulars.
In order to proceed with the filing, administrative fees and official fees will have to be paid, which vary on the basis of the length of the text and on the number of claims. To know the official fees in force at the moment of the filing of the application, it is advisable to consult the WIPO website.
To prepare the patent application well is as fundamental as to analyse well the invention before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of infringement is higher or lower.
3. The international procedure ↑
Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file initiates. Unlike what happens with the European patent, in the PCT procedure no grant is obtained of an international patent since the unitary procedure is interrupted before the examination of the application. Once the application is received, the international Office proceeds with the novelty search and provides a preliminary opinion of grant. If the applicant of the patent deems it appropriate, he can further request an international preliminary examination, which consists of the possibility of arguing with the international examiner, in case the preliminary opinion were negative, in order to try to convert it into a positive opinion. The international search and the preliminary opinion of the international examiner, even if resulting optimal indications of the real possibilities of grant of the patent, are not binding opinions for the final outcome.
Once this phase has been completed, that is almost in the totality of cases after 30 or 31 months from the priority date, the international phase is finished and the national or regional phases will have to be started by requesting to each state to examine the patent and to grant it. From this moment on the patent will branch off in many national patents which will follow each one its own path. The advantage of the PCT is that of being able to file a patent application substantially all over the world at reduced costs that will undergo a single search and, except rare exceptions, with the further advantage of being able to dispose of 30 months of time to understand in which states the patent deserves to be further prosecuted and obtained.
Thanks to this procedure, with a quite modest expense considering the width of the extension, one’s invention can be protected and commercial negotiations or sales can be initiated all over the world without problems, postponing to a subsequent moment the final choice of the states.
A person who has filed a PCT is not obliged to proceed with the national phases in all the states initially indicated but can choose to do so only in some countries of his interest, thus reducing the costs.
The national phase consists of the filing in the state chosen of the international application, often translated in the local language, of the payment of the fees foreseen by the state and of a series of fulfilments that vary from country to country. For this phase it is needful to be assisted by an expert that is acquainted with the local regulations.
4. Keeping the international patent alive ↑
During the international phase, once the fees have been regularly paid for the filing and the search, no other fees have to be paid to the WIPO and annual fees do not have to be paid either. Annual maintenance fees will instead be paid from the moment of the entry into the national phases and will have to be paid state by state in each country where the nationalization is done.
5. Duration and protection ↑
Even if many months are necessary before the international patent application is granted as a national patent in one or more of the states indicated, in this period the invention can be realized, sold or licensed.
Moreover, action can be taken against an infringer also on the basis of the single public patent application, with the assistance of an attorney expert in the field to avoid mistakes that could compromise the success of such an action.
The national patent obtained after a PCT filing is valid for 20 years that are counted from the filing date of the international application.
6. Regulations ↑
The Patent Cooperation Treaty (PCT) of 1970 and subsequent amendments.