PCT System and Patent Protection abroad
With the economic globalization, the relevant markets for companies of all sizes stretched over covering a growing number of countries. Therefore, patent protection abroad became increasingly requested and necessary in order to obtain a competitive advantage upon competitors.
It is well-known that national patents allow for a monopoly right exclusively limited to the territory of that specific country. Therefore, in order to be able to benefit from exclusive rights in several countries, it is necessary to file corresponding parallel patent applications. Of course, filing a certain amount of patent applications abroad entails a relevant increase in costs for the related granting procedures and the afterwards maintenance. Hence, a strategic approach balancing as much as possible costs and benefits of patent protection on an international level is highly advisable; a correct and balanced selection of countries where to file patent applications is strictly connected to an accurate market screening as well as the analysis of competitors’ trade and production networks.
In such a diversified and wide framework as today’s business scenario, a correct planning of the most suitable protection strategy is very complex and requires quite long timings, often conflicting with the typical promptness of whoever is interested in protecting an invention in a highly competitive technological sector. Moreover, this planning suffers from a significant uncertainty, at least in the initial implementation phase of the invention.
A very interesting and widespread tool favouring such planning is the so-called PCT international application, established by the Patent Cooperation Treaty, subscribed in Washington on June 19th 1970 and come into force on January 24th 1978.
PCT international application: procedural principles and advantages
PCT international applications can be filed at the International Bureau (IB) created by the Treaty or in one of the national (such as the Italian Patent and Trademarks Office or IPTO for Italian applicants) or regional offices (such as the European Patent Office or EPO for Italian applicants) acting as Receiving Office (RO), which will then transmit it to the IB.
If a PCT international application describes an invention for the first time, such application provides for a priority right which can be claimed in subsequent patent applications filed within one year from the filing date of the PCT international application, according to Paris Convention for the Protection of Industrial Property.
As an alternative, the PCT international applications can be filed claiming the priority right of the previous patent application describing the invention for the first time. In this case, the PCT international application must be filed within one year from the date of filing of the previous application. In this way, the relevant state of the art for evaluating the invention object of the application will be backdated to that of the first application.
At filing, all contracting states of the Treaty (they were 152 on August 31st 2019) are designated reserving the right to request a patent application in each one of those countries.
PCT international applications undergo a patentability search carried out by the national or regional office acting as International Search Authority (ISA), according to the Treaty, and then get published.
In addition, within 22 months from the filing or priority date it is possible to request an international preliminary examination to an office acting as examining authority (International Preliminary Examination Authority or IPEA). The international preliminary examination is conducted based on the outcome of the search report and ends with a preliminary opinion on patentability, which is in general not binding for subsequent national or regional procedures.
Anyways, PCT international procedures do not end with the granting of an “international patent”, but with the filing of corresponding national (for example in China, Russia, USA etc.) or regional patent applications (like the European patent application), each one then following its own granting procedure.
The deadline to file these patent applications is in most of the cases 30 or 31 months from the filing or priority date of the PCT international application. This time limit gives the applicant the chance to plan the most suitable protection strategy for his/her invention in a long time range, thus reducing the risk of lacking protection in countries, which are relevant for production and/or sale.
This advantage is even more evident in cases when a PCT international application claims priority of another previous patent application. In such instance, the applicant choosing to follow the PCT procedure actually postpones the deadline to decide in which countries to file a corresponding patent application from 12 to 30 or 31 months from the priority date.
Of course, there is still the obligation to file – at the same time of the PCT international application – parallel patent applications in those countries outside the PCT (such as Argentina or Taiwan) being relevant for the applicant’s economic interests.
In order to correctly plan the most suitable protection strategy at the international level, also in terms of a cost-benefit analysis, it is fundamental to seek advice from experts in the field. Our team of dedicated consultants with specific preparation in every technical field: from mechanics to electronics, from chemistry to biotechnology – follow Barzanò & Zanardo Clients from the application to the filing, from the licensing to its utilization, and offer an integrated approach to the protection of intellectual property at the service of innovation.