The Patent Cooperation Treaty has its advantage of being able to file a single international patent application to achieve recognition and patent protection rights in multiple countries or nations in a single procedure. This implementation mimics or recalls a similar process employed by the Madrid Agreement, which is the international system for trademark registration and international trademark protection rights. The procedure for the international patent application is simple in the sense that only a single application is required. However, there are various steps that are undertaken to approve an international patent application.
The first thing that must be considered is the applicants requirements. The applicant for an international patent must be a resident or national of a member state or signatory nation to the Patent Cooperation Treaty. In certain instances, the Assembly of the PCT may also recognize certain international patent application requests from a country who may not be a member under the PCT, but is a signatory to the Paris Convention. A reason this may be implemented is because all countries that are members to the PCT are required to adhere to the Paris Convention in order to be considered eligible for membership. In the case that there are various individuals or parties under one application, at least one of those must be considered a resident or national of the country in which the application is being submitted.
The international patent application itself must also contain certain requirements as outlined in the PCT. The international patent application must contain a request, a description, at least one claim, and abstract, and any drawings that maybe required. Furthermore, the application must be done in a prescribed language as allowed by the PCT. The international application must also adhere to all the physical requirements, as well as the requirements of unity of invention. Lastly, the application must be accompanied by the necessary and imposed fees. As mentioned before, the application must also provide for certain considerations that are outlined by the PCT.
The request of an international application must contain certain requirements. A written petition must be furnished that the international application is to be filed and processed under the provisions of the PCT. When the application is to be filed with the proper office in the signatory country–also known as a Receiving Office–the applicant must make note of which signatory countries the patent is to be protected and recognized in. Furthermore, if the applicant wishes to obtain a regional patent rather than a national patent in a particular signatory nation, this must also be explicitly noted.
Logically, the name and all pertaining data to the applicant and representatives must also be included in the request. The request should have in place the title of the invention which can appropriately and distinctly identify the invention or innovation. Accompanying the international patent application must also be the description, the claim, and the drawings, if required. The description of the invention or device must provide for enough information and data so as to allow any person experienced in an applicable field to successfully reproduce and use the device in question. The claims must define the invention or innovation in a clear and concise manner so as to provide for the fullest extension of protection by international patent laws.
If drawings are needed in order provide for a better understanding of the mechanical and functional nature of the invention, they too must be included in the international patent application. Though in certain cases drawings may not be required under PCT standards, certain signatory nations and their respective patent offices may at any time require drawings in order to more fully comprehend the nature of the innovation and device, and provide for further consideration for patent protection in that particular country. The required fees under the PCT must also be included at the time of submission of the international patent application. Once all the requirements are met, the international application is to be treated as a national patent application of that particular country.
Once the application is submitted to and received by the appropriate Receiving Office, the second stage of the international patent application process begins. The international filing date is recorded on the date of receipt of the international patent application. The Receiving Office will then review the application in order make sure that all of the requirements are met under the PCT regulations. If there is a correction to be made, or a certain requirement was not met, the Receiving Office will notify the applicant allow for the necessary corrections to be made. Once the corrections are submitted, the international patent registration date will reflect the date in which the corrections were submitted.
The approved international patent registration, or otherwise corrected, will then be transferred to the International Bureau and the International Searching Authority. Three copies are made, one to be kept for each faction handling the application, the home copy for the Receiving Office, the record copy for the International Bureau, and the search copy for the Searching Authority. The true copy of the application is designated to the record copy, and is considered as such. If the record copy is not received by the International Bureau within the expressed time requirement, the international patent application will be considered void. The required fees must also accompany the application.
It is important to note that if the fees received are not paid in full or are received for certain signatory countries for registration, but not others as designated in the application, the application will only apply to those countries to which the appropriate fees are paid in full. After all the necessary examinations of application are carried out, and it can be deemed as being properly filed with all the requirement being met, the international patent application will be subject to an International Search.
An International Search is conducted for purpose of investigating if the invention or innovation in question relating to the application has any relevant prior art in existence. An authorized International Searching Authority will conduct the examination, and will use the application’s included claims as its basis for analysis. After a thorough examination the Searching Authority will produce a written opinion regarding the patent’s application status. The report will be issued within a nine month period, or a sixteen month period if there exists a claim of priority on a first filing.
Though the process of international patent application and registration may prove to be extremely similar to that of the United States, there are certain requirements and implementations added in order to provide for a larger scope in terms of the examination of prior art; the examination is not of just one country’s patents, but of all that are signatories to the PCT. At plain sight, the application process is simple, but allowing for just one application process for multiple protection rights. However, on receiving side of the application process, it can be evident that much goes into the approval of an international patent application.