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What Is A PCT Application?

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11 May, 2021

Can I get an International patent?

Unfortunately, you can’t. A patent is a national intellectual property right. This means that a UK patent will only provide protection in the UK and it is necessary to obtain a patent in each country in which you want to protect your invention. However, you do not have to file all your applications at once. There are a number of international agreements which allow some time to decide on the countries you want and thus to spread the costs involved.

The Paris Convention, which has over 170 member countries, allows an Applicant who has filed a patent application in one member country to file corresponding applications in any of the other member countries up to 12 months later. The later applications “claim priority” from the original application, meaning that they are treated as if they had been filed on the same day as the original application.

Therefore, one option available is to file separate national patent applications in your chosen countries up to 12 months after filing your first application. This is suitable if you already know which countries are important to you and if you are only interested in protection in a small number of countries.

Alternatively, you can make use of other international agreements which allow a single patent application to be filed covering a number of different countries, further streamlining the process. In the UK, the most well-known of these are the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC).

International (PCT) Patent Applications

Using the PCT system, a single patent application can be filed which covers over 150 countries around the world. A PCT patent application remains as a single entity during its “international phase”, during which time a search will be carried out. This allows the Applicant to gauge the prospects for getting the patent granted. However, a PCT patent application cannot progress all the way through to grant as a single entity. Instead, it must be split into separate patent applications in the desired countries. This “national phase” must be initiated up to two and a half years after the original patent application was filed. This effectively provides an additional 18 months in which to decide on the countries of interest versus the direct national filing approach.

There are a number of benefits to using the PCT system. These include:

  • delayed filing and translation costs for individual countries, which are deferred until 30 months from the priority (or filing) date – the additional time can be helpful to determine which commercial markets are most important, which often will not be known immediately after an invention is conceived;
  • centralised search and examination, which can lead to easier grant in some jurisdictions; and
  • reduced duplication of work in relation to certain administrative matters, such as assignments.

However, there are some drawbacks to using the PCT, including:

  • relatively high filing fees for a PCT application;
  • the fact that entering the national or regional phases incurs similar costs to filing a regular national or regional application, so the overall cost (taking into account the PCT filing fees) is higher than for direct national filings;
  • the process is slower than direct national filings; and
  • some countries are not available via the PCT, such as Taiwan and Argentina.

European Patent Applications

Using the EPC system, a single patent application can be filed with the European Patent Office (EPO) covering over 30 countries around Europe, including both EU members and non-members. A European patent application remains as a single entity all the way through to grant. However, when the application is accepted for grant, the Applicant must then choose which European countries are required and the patent must be validated in the chosen countries to come into effect.

Worldwide Filing Strategy

Thus, a typical filing strategy for a UK business which wants protection in the UK and some countries abroad is to start the process with a UK patent application and up to 12 months later, file a PCT patent application. Subsequently, the PCT application may be split into national applications in certain countries, for example the USA, Japan and China, and a regional patent application such as a European patent application. When the European patent application is granted, it is then validated in the chosen countries around Europe.

 

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