Typically, we bill USD $2,000 (or, if you are a very small entity with < 20 employees- a 50% reduced, flat-fee of USD $1,000 ) to Prepare, File,
and Manage the PCT patent filing process. As little as a 24hr turn time is possible (yet we prefer 1-2 weeks), and pre-approval is required for such rush work.
Many other practical questions similar to the above should be
considered. If your answer is yes to any one such factor, then it is prudent to
secure the right to file foreign patents all around the world, even if you later
choose not to do so. This is what the PCT patent application enables you to do:
defer the decision at a relatively low cost, especially when compared to the
extremely high cost of filing in each foreign country. The PCT gives you time to
decide which foreign markets turn out to be the most valuable and worthwhile to
apply for patent protection in.
PCT Patent Overview
Obtaining a patent in one country, does not give the owner of the
patent worldwide protection for the invention. Instead, a patent application
must be filed in or for each country where protection is desired. Moreover, such
applications must be filed by a deadline set by each particular country. Patent
applications often must have an effective filing date which predates any public
disclosure of the invention. This requirement can place quite a burden on the
filer in meeting time limits and having enough funds available for filing
foreign patent applications. Fortunately, there are treaties which many of the
countries around the world have ratified which help to ameliorate this
situation. Two of the commonly used treaties are the Paris Convention and the Patent
Cooperation Treaty (PCT).
The Paris Convention
The Paris Convention is a treaty which first came into force more
than 100 years ago and which most industrialized countries have joined (the most
notable exception is possibly Taiwan). In very broad
terms, this treaty offers to parties filing patent applications in a member
country a grace (or priority) period within which patent applications can be
filed in other member countries. In the case of a design patent (and a
trademark, for that matter), the grace period is six months. In the case of a
utility patent (also known as a patent of invention), the grace period is one
year. Thus, this treaty affords an individual or a corporation a grace period
within which to file foreign patent applications in member countries, the grace
period being measured from the date of filing the first patent application
directed to the invention (or design) in a member country. Since most major
countries are members of the Paris Convention, the individual or corporation can
usually file a patent application in its home country and then later (within the
grace period) file corresponding patent applications in other member
countries.
Claim to Priority
When a foreign application is filed under the Paris Convention in
a country which has ratified this treaty and within the applicable grace period,
it is filed with a claim to "priority". That is, the application in the foreign
country will be treated as if it had been filed on the same date as the first
application filed in another Paris Convention member country. Another way of
expressing this concept is to say that the foreign patent application has an
effective filing date which is the same as the actual filing
date of the first application. The benefit of this claim to priority is readily
apparent to Intellectual Property lawyers. If you are not an Intellectual
Property lawyer, consider an invention which the owner has maintained in secrecy
prior to filing a patent application in their home country (which is assumed to
be a member of the Paris Convention). After the patent application has been
filed, the owner may make the invention public (for example, by selling a
product embodying the invention or by other promotional activities). The owner
can still obtain patents for the same invention in other countries which are
members of the Paris Convention, provided the other patent applications are
filed within the grace period noted above and a claim for convention priority is
made.
Non Paris Convention Countries
While many countries have ratified the Paris Convention, there are
a number of countries which have not done so. One such country is
Taiwan. Since Taiwan follows the general regarding the required
novelty of inventions, Taiwanese patent applications must be filed (as a general
rule) before the invention is made public in any way anywhere in the world.
However, just because a country is not a member of the Paris Convention, that
does not necessarily mean that there is not some other way of making a priority
claim. In the case of Taiwan, the government of Taiwan has passed legislation
allowing for a priority claim based on a patent application filed in a foreign
country which provides the same privilege based on reciprocity. The United
States and Taiwan have negotiated a Memorandum of
Understanding, which came into effect on April 10,
1996, concerning such priority claims. Taiwan and the United States
will honor priority claims based on patent applications (for a one year priority
period) and design applications (for a six month priority period) filed on or
after that date in the other jurisdiction, but the priority right will
apparently be more narrow than it is in the case of a priority claimed under the
Paris Convention. For example, a non-U.S. national who is the applicant of an
U.S. patent application may well not be able to claim priority to their U.S.
patent application in a subsequent application filed in Taiwan. There are a
number of other possible limitations which are too detailed to treat in the
context of this general article. Moreover, there are many unanswered questions
which may not be clarified for some time with respect to not only how broad the
priority coverage will be, but also respect to the possibility of claiming
priority to an U.S. Provisional Patent
Application or a PCT patent Application designating the
United States.
As the reader can readily appreciate, the Paris Convention offers
a tremendous advantage to patent applicants. However, despite this advantage,
many inventors are still not prepared, even after a one year grace period, to
undertake the expense of foreign filings. Fortunately, the Patent
Cooperation Treaty, known as the PCT patent, offers
the inventor yet another avenue to defer such expenses.
The Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT patent) patent has been
subscribed to by a large number of countries. Many members of the Paris
Convention are also members of the PCT patent, but there are important
exceptions. The number of countries which are members of the PCT patent seems to
increase year by year. A current list is usually maintained by the World Intellectual Property Organization
(WIPO). As you can see, nearly all of the major countries of the world are
PCT patent members.
Under the PCT one can file an "International Patent Application" which effectively
buys a period of time within which to proceed with a full program of national or
regional (such as the EPO) patent applications. The PCT patent offers an initial
phase known as Chapter I and a second phase known as Chapter II. The countries which have ratified the PCT have
the option of ratifying only Chapter I of the treaty or of ratifying both
Chapters I and II of the treaty. Initially, many countries, including the United
States, only ratified Chapter I of the PCT patent and at that time Chapter I had
a fixed length of 20 months while Chapter II had a fixed length of an additional
10 months.
Today, all countries which have ratified the PCT permit an
applicant to take advantage of both Chapter I and Chapter II. Thus, the full period of time within which to
proceed with a program of national or regional (such as the EPO) patent applications is 30 months from the filing date
of the earliest patent application to which priority is claimed or 30 months
from the filing date of the International Patent Application if no priority is
claimed. The International Patent Application may be filed within the 12 month
grace (priority) period provided by the Paris Convention (discussed above) by
making a claim for convention priority.
The Chapter I stage involves the filing of
the application and the publication of an International Search
Report while Chapter II involves
"International Preliminary Examination" and the eventual issuance of an
International Preliminary Examination Report (IPER) or
International Preliminary Report on Patentability (IPRP).
Originally, in order to be entitled to the full 30 month time period provided by
the PCT under Chapter II, an applicant had to file a "Demand for International
Preliminary Examination" prior to entering Chapter II procedures.
Due to recent changes to PCT patent practice, the filing of the
Demand for International Preliminary Examination has become optional for many,
but not all, PCT member countries and the International Search Report is now
combined with a Written Opinion regarding the patentability of the invention. It
seems that most applicants have been more interested in obtaining the benefits
of the 30 month time period than in amending an application under Chapter II and
that the patent offices have had problems in staffing their offices with
suitably trained Examiners. So, the PCT patent has been moving to meet the
applicants' desire and to reduce the examination backlogs at the patent offices
by making the filing of a Demand for International Preliminary Examination
optional while still giving applicants the desired 30 month time period to file
National and Regional Stage Applications. Additionally, the issuance of a
Written Opinion, which heretofore only occurred during Chapter II, will now
issue with the International Search Report during Chapter I.
However, some countries encoded the original PCT patent Chapter I
and Chapter II regime into their national laws and thus, until such countries
amend their national laws to harmonize them with the latest PCT patent practice,
it is still necessary to file a Demand for International Preliminary Examination
if the applicant wishes to take advantage of the 30 month deadline date for
entering the National Stage in such countries. A number of countries originally
fell into this category and many of them have already amended their domestic
patents laws to adopt the new PCT patent regime. However, a few countries have
yet to harmonize their domestic patent legislation with the new regime. At
present, those countries include Sweden, Switzerland, Tanzania and a few other
countries. A list is maintained by WIPO.
In addition to making the filing of a Demand for International
Preliminary Examination largely optional (for most countries) and pushing the
issuance of a written opinion into Chapter I, the recent changes to PCT patent
practice have also blurred the deadline date for entering Chapter II. But, for
those countries which encoded the original PCT patent Chapter I and Chapter II
regimes into their national laws, the deadline date for filing of a Demand for
International Preliminary Examination is still 19 months from the filing date of
the earliest patent application to which priority is claimed or 19 months of the
filing date of the International Application if no priority is claimed. For
those countries that either did not encode the original PCT patent Chapter I and
Chapter II regimes into their national laws or have amended their national laws
to agree with current PCT patent practice, the deadline for filing the now
optional Demand for International Preliminary Examination is either (i) 3 months
from the publication of the International Search Report or (ii) 22 months from
the earliest priority date (or the filing date of the International Application
if no priority is claimed), which ever is later.
Several countries which have ratified the PCT patent permit their
designations to be in terms only of a regional patent application and not a
national patent application. When you combine this fact with the fact that some
countries still follow the original PCT patent Chapter I and II regime, trying
to figure out that which needs to be done when and where can be a bit
confusing.
Filing under the PCT is typically done at one's home country
patent office. In PCT patent parlance, the filing of the application is done at
the "Receiving Office" and the filed application is called an
"International Patent Application". Under PCT patent Rules, the
Receiving Office which an applicant may use depends upon the party's nationality
or country of residence. Fees must be paid when the application is filed and
those fees are based on a number of factors, including the length of the
application and, originally, the number of countries which were designated.
The Patent Cooperation Treaty is effective for patents of
invention only. Unlike the Paris Convention, the Patent Cooperation Treaty has
no impact on design patents (or trademarks, for that matter). Thus, you cannot
use the PCT patent to prolong the relatively short six month grace period for
filing foreign design applications provided by the Paris Convention.
The International Patent Application
The filing of an International Patent Application is treated as
the effective filing of separate patent applications in each PCT member country
designated in the International Patent Application. The International Patent
Application can often be filed in your native tongue. Thus, for United States
applicants the International Application is filed in the English language while
for Japanese applicants the International Patent Application is filed in the
Japanese language.
Originally, designation fees had to be paid and the applicant had
to designate countries specifically in the International Application. Today, the
need to specifically designate countries has largely, but not completely,
disappeared. The need to pay specific designation fees has now gone. However,
there are instances when not designating a particular country can be
important.
It is to be noted that the International Application does not
mature into some sort of international patent. Quite to the contrary, it acts
primarily as a delaying vehicle. This is because eventually National (or
Regional, where appropriate) Stage Applications must be filed before patent
offices of the member PCT countries designated in the International Application
in order to secure patents. These patent offices are referred to as
"Designated Offices" in PCT patent parlance. Failure to take
such action causes the International Patent Application to lapse in the country
for which no action was taken. However, an International Application may pend
for up to 30 months as mentioned above. Thus, instead of having only a twelve
month time period within which an inventor must file foreign applications in
order to claim priority, with the PCT patent, the inventor can gain an
additional eighteen months before having to incur the relatively large expenses
of completing the applications at each of the Designated Offices (entering the
"National or Regional Stage" in PCT patent parlance) which
entails translating the International Application into the official languages
used at the Designated Offices, paying the requisite official fees, etc. Those
additional months can be crucial to the exploitation of an invention. They may
give the inventor additional time to raise the funds required to file patent
applications in a large number of countries, or provide additional time within
which to gage the economic importance of the invention, or to find licensees or
even partners in the enterprise.
An International Patent Application follows the general form of
patent applications in that it must include a technical description of the
invention, drawings (when appropriate) depicting the invention and claims
setting out the metes and bounds of the subject matter for which patent
protection is being sought, in addition to certain formal documents which must
also be submitted when the International Application is filed.
Qualified PCT patent Applicants
A party may file an International Patent Application only if the
party is a citizen, resident or domiciliary of a PCT member country and also
provided that the applicant files preferably at the Receiving Office designated
for their country or at the International Bureau (IB) of WIPO
in Geneva. The applicant may be a corporate entity, although if the United
States is a designated country, then the applicant for the purposes of the
United States must be the inventor or inventors.
Typically, the Receiving Office for a given PCT member country is
the local national patent office although all qualified applicants also have the
option of filing an International Patent Application with the IB if they prefer.
A qualified party, that is, a party that is a domiciliary, resident or citizen
of a member PCT country, may file their International Patent Application
initially at their Receiving Office or at the IB (that is, without first having
filed a regular domestic patent application at the patent office in their home
country) or they may wait to file at their Receiving Office or at the IB near
the end of the one year grace period provided by the Paris Convention if they started out by filing a
regular national patent application. Countries which join the PCT must also be
members of the Paris Convention, and thus the International Patent Application
can be filed within the one year grace period provided by the Paris Convention.
Often the applicant elects initially to file a patent application at their home
patent office as a regular domestic patent application rather than as an
International Patent Application. Then the Applicant files an International
Patent Application at their Receiving Office close to expiration of the one year
grace period provided by the Paris Convention. A majority of the International
Patent Applications filed follow this latter route and are filed at the
applicant's Receiving Office rather than at WIPO.
It should be perhaps noted, in passing, that the choice of the
Receiving Office to be used can be compounded by laws governing the export of
technology for the inventor's home country and/or where the invention was
made.
Chapter I
Chapter I enables one to file an application at the PCT patent
Receiving Office and have it pend for at least twenty months from either (i) the
filing date of the International Application (if no priority date is claimed
under the Paris Convention) or (ii) the earliest claimed priority date. A
priority date would normally be claimed to the home country filing date if the
International Application is filed at the Receiving Office within one year of
the home country filing date. As such, PCT patent Chapter I gives the applicant
at least an additional eight month time period beyond the twelve month grace
period provided by the Paris Convention before the substantial expenses
associated with entering the National (or Regional) Stage must be incurred. As
indicated above, for many PCT patent member states, the International
Application now pends for thirty months from either (i) the filing date of the
International Application (if no priority date is claimed under the Paris
Convention) or (ii) the earliest claimed priority date.
During Chapter I a search of the prior art is accomplished.
Applicants often have the choice of using a different patent office for doing
the search than the patent office which serves as the Receiving Office for the
applicant. The prior art search is reported in an International Search Report
which is discussed more fully below. Under the new PCT patent regime, a Written
Opinion regarding the patentability of the claims will accompany the
International Search Report. If no Chapter II Demand is filed, the International
Search Report and the accompanying Written Opinion will form the
International Preliminary Report on Patentability (IPRP) that
will be published, in due course, by WIPO.
Chapter II
Chapter II provides a mechanism for an application to undergo an
interactive International Preliminary Examination of the patentability of the
invention. Chapter II also increases the pendency of the International
Application from twenty to thirty months from the priority date, if claimed, or
from the international filing date, if no priority was claimed, for those
countries which continue to adhere the original PCT patent regime. As indicated
above, the filing of a Demand for International Preliminary Examination is no
longer necessary for most countries in order to take advantage of the 30 month
time period. To take advantage of interactive examination available under
Chapter II one must file a Chapter II Demand and pay an additional fee, called a
Chapter II Demand Fee, at the PCT Office which is to attend to the interactive
examination. The International Preliminary Examination
process is discussed in greater detail below.
Search and Publication of the Invention under Chapter I
While the Paris Convention serves primarily to enable one to
obtain a grace period for filing foreign patent applications, the PCT offers
more. Once a party has filed an Intentional Patent Application at their
Receiving Office, a search of the prior art is conducted for the invention to
apprise the owner of what prior art appears to be relevant to the invention.
This search is made under Chapter I and a report called the
International Search Report normally is made available to the
applicant (and to the public) shortly before the deadline date for entering
Chapter II. Under the new PCT patent regime, a Written Report regarding the
patentability of the invention is made available to the applicant. If it appears
to the applicant that the prior art disclosed in the search and discussed in the
Written Opinion renders the invention unpatentable (or less important than first
thought), the owner of the application may then choose to allow the
International Application to lapse as opposed to going forward with the expense
of entering the National Stage. Additionally, under Chapter I of the PCT patent,
a copy of the patent application (together with the aforementioned International
Search Report, but not the Written Opinion) is published 18 months from the
priority date (if claimed) or the international filing date (if no priority is
claimed). This publication puts the public on notice that the applicant is
seeking to protect the invention and also effectively precludes another party
from obtaining a patent on that invention in many countries since the PCT patent
publication will create a prior art bar to subsequent applicants. Of course, in
countries, such as the United States, which have a grace period, that bar (due
to publication of the PCT patent application) will occur one year later for
inventors who had previously made the same invention.
A negative aspect of the publication is that if the owner of the
International Application has not previously filed in foreign countries which
are not designated in the PCT patent application, then the applicant will be
precluded from thereafter seeking patent protection of the published invention
in those countries (unless the country in question has a national grace period
or the PCT patent publication is not prior art in the country for some other
reason). A publication of the invention prior to filing a patent application for
the invention will preclude patent protection in most countries. However, in
many, but not all PCT countries, this publication of the invention can enable
the owner of the International Application to seek damages in subsequent patent
infringement litigation back to the date of publication of the International
Application. This ability to seek backdated damages arises if a patent is
ultimately granted for the invention in countries which allow such backdating of
damages. It may also involve translation of the claims of the International
Application or otherwise putting an unauthorized user on notice in order for the
backdating to occur.
Examiner's Review of the Invention under Chapter II
In Chapter II the proceedings are called "International
Preliminary Examination". Under the old regime, an Examiner would review the
prior art documents reported in the International Search Report and issue an
International Preliminary Examination Report (IPER) regarding the patentability
of the invention. The IPER was based not only on the prior art references
mentioned in the search report, but also considered whether the claims in the
International Patent Application meet other criteria for patentability,
including such matters as the clarity of the claims, and prior art which may be
known to the Examiner but which did not appear in the International Search
Report.
Under the new regime, the Examiner instead issues an
International Preliminary Report on Patentability (IPRP) which
is expected to have the same content as the older IPER.
Prior to issuance of the IPRP or IPER, a Written
Opinion should issue. Under the old regime, the Written Opinion would
issue after the Demand had been filed if any claim was not patentable. Under the
new regime, a Written Opinion is to be prepared under Chapter I in connection
with the International Search Report. However, if the office performing the
search and the office performing International Preliminary Examination are
different offices, then a separate Written Opinion may still be issued by the
office doing the examination after a Demand is filed, if any claim is not
patentable.
The owner of the patent application has the opportunity to respond
to a Written Opinion and argue for the patentability of the claims as well as
make amendments to the claims (assuming that the Examiner takes a negative view
of at least some of the claims in the application). Under the new practice, this
response must be filed with the Chapter II Demand if the Applicant desires that
the claims be amended and/or desires that its views regarding the patentability
of the claims be considered. Any arguments and any amendments made to the claims
will be reviewed by the Examiner and may cause the Examiner to change his mind
regarding the patentability of the claimed invention. Irrespective of whether
the Examiner's initial opinion changes with the subsequent submissions, the
Examiner will issue an IPRP setting forth the Examiner's position regarding the
patentability of the claimed invention. Unfortunately, in the past, IPERs have
sometimes issued long after the deadline date for entering the National Stage
has passed and any delay in issuing the IPER/IPRP does not excuse the applicant
from filing the National (or Regional) Stage applications in a timely
fashion.
Ultimately the IPER/IPRP is passed to the countries designated in
the International Application in order to assist the examiners at the various
national patent offices in reviewing the eventual National Stage applications.
This should expedite the review of the applications in those countries and give
the applicant a higher degree of confidence as to what will be the outcome of
the national examination processes. Thus, there is a possible cost savings for
the applicant in that an initial examination of the application under a single
authority occurs which examination can be used in the Designated Countries
hopefully to convince the examiners in those countries to allow the applications
to mature into patents with no or little additional amendment of the
applications. In some instances, if appropriate arguments and amendments are
made during Chapter II, this can result in the applications being granted as
patents with a minimum of additional interplay with the examiners before the
Designated Offices. Moreover, in countries where no real examination is
undertaken, the PCT patent International Preliminary Examination may offer the
application the sole opportunity to prosecute the application before it matures
into a patent. Thus, the PCT patent procedures may not only offer a welcome
delay in deciding where (and whether) to file patent applications, but can
ultimately save one money in securing foreign patents. Unfortunately, few
applicants are interested in this latter feature of the PCT patent.
