International Patent Agreements

The Patent Cooperation Treaty (PCT) assists applicants in the international search for patent protection of their inventions, assists patent offices in their patent grant decisions and facilitates public access to a wealth of technical information on these inventions. Finally, 30 months[80] after the filing date of the PCT application or from the earliest priority date of the application, when priority is claimed, the international phase ends and the PCT application enters the national and regional phase. However, any national legislation may provide for periods exceeding 30 months. For example, it is possible to enter the European regional phase 31 months after the nearest priority date. The national and regional phases may also be started earlier at the express request of the applicant, even before the publication of the international application. [81] If you file an international patent application in the United States, pct deadlines are directly related to the initial priority date of the application. In most countries, you have 30 months from the initial priority date to decide in which Member States you wish to apply, rather than on the date the international patent application was filed. The millionth PCT application was filed at the end of 2004,[83] while the two millionth application was filed in 2011. [84] The first decrease in the number of PCT applications filed in more than 30 years occurred in 2009, with a decrease of 4.5% compared to 2008. [85] In 2013, approximately 205,000 international applications were filed, making 2013 the first year in which more than 200,000 PCT applications were filed in one year. [86] The 3 millionth PCT application was published on February 2, 2017. [87] By the end of 2020, the total number of PCT applications filed since the system became operational in 1978 is expected to reach 4 million. [9] Records of the International AuthorityThe main purpose of the acts of the Published Patent Documents Authority is to enable all interested parties to assess the completeness of the patent documentation available from the Office for the Protection of Intellectual Property (IPO) that created the authority file.

USPTO authority files and international standardization information for these files are available on the USPTO Authority File website. An applicant must file the international patent application with the “receiving Office” designated for each member country or may choose the International Bureau (IT) as the “receiving Office”. For inventions made in the United States, an applicant must first obtain a filing license abroad to file the international patent application in a Member State, although a license to file abroad is not required for filing in the United States. As mentioned earlier, a foreign filing license is usually granted at the same time when you file a patent application with the USPTO. The PCT procedure consists of two phases: 1) the “international” phase and the “national” phase. In the first phase, the applicant files the international patent application. In the second phase, the application is assessed in accordance with the specific patent laws of the Member States. Global Dossier Provides stakeholders with secure and unique access to related applications via ip5, the five largest patent offices in the world. Published international applications are available on PATENTSCOPE, one of WIPO`s global databases. This database also contains patent documents from 60 participating Offices, which provide the public with free access to more than 92 million technology disclosures. The international search report can help the applicant decide whether it is worth applying for national protection and, if so, in how many countries fees and other expenses, including translation costs, must be paid to enter the national phase in each country.

Another advantage of filing a PCT application is that many national patent authorities rely on the international search report (although the PCT does not require them to do so) rather than performing a prior art search themselves, which saves the applicant search fees. [52] The first step in the procedure is to file an international application (patent) with a competent patent office, the receiving Office (PRA). This application is called an international application or simply a PCT application because it does not result in an international patent or a PCT patent, none of which exists. The PCT application must be filed in only one language, although international search[20] and international publication[21] may require a translation of the application depending on the language of the application and the competent or chosen International Searching Authority[22]. [20] [21] Collaborative Search Pilot Program (CSP)Provision of search results from multiple Offices to applicants filing their patent applications internationally, at the beginning of the examination procedure. This allows the applicant to determine their next steps in the patent grant procedure. An international preliminary examination may be requested (“requested”). [66] [67] International preliminary examination is carried out by an approved Provisional International Examining Authority (IPEA) and is intended to “provide a preliminary and non-binding opinion on whether the claimed invention appears to be new, is based on an inventive step (non-obvious) and is capable of industrial application”.

[68] The result is an International Preliminary Examination Report (IPER). Since 2004, the IPER has been entitled “International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)” (usually abbreviated “Chapter II of the IPRP”). [69] For the submission of a request for international preliminary examination, which must be filed within a time limit,[70] a “processing fee” in favour of the International Bureau[71] and a “provisional examination fee” in favour of the international preliminary examination must be paid. [72] The cost of filing an application varies depending on the HIA used by the applicant. [45] [67] However, the Preliminary Examining Authority(es) that the applicant may choose depends on the receiving Office with which the applicant filed the PCT application (the same applies to the International Searching Authority). [45] An international search or search is then performed by an Authorized International Search Organization (ISA) to find the most relevant prior art documents relating to the claimed subject matter. The search results in an international search report (ISR) accompanied by a written opinion on patentability. [44] The International Searching Authority(ies) that the applicant may choose depends on the receiving Office with which the applicant filed the international application.

[45] In 2013, the most frequently selected International Searching Authorities were the European Patent Office (EPO) (with 37.7% of all SRI granted), followed by the Japan Patent Office (JPO) (20.7%) and the Korean Intellectual Property Office (KIPO) (14.8%). [46] Filing a patent application in multiple countries can be time-consuming and difficult. To avoid the hassle of duplicate applications to obtain patents in multiple countries, international treaties have been signed over the years. .