Patent Search

Filing Strategy: International Patent Applications (PCT)

Intellectual Property Firms

A common misconception to those unfamiliar with the patent application process and choosing jurisdictions to file patent applications is that there is no such thing as an international patent. There is an international patent application process which was established under the Patent Cooperation Treaty (PCT) to streamline the procedure for applying in multiple jurisdictions. Such applications are referred to as PCT applications; however, there is no PCT patent that results from such applications. At the end of the process, applicants select the jurisdictions that they would like to enter in the context of an IP strategy, a process known as national and regional phase to obtain a patents in the US, EU, JP, as well as a patent in Israel.

 

A PCT application can be filed with a claim to a priority right to a previously-filed patent application (including a utility patent, provisional patent application, and utility model) within 12 months of the earlier filing date. This is often done as part of the filing strategy in order to defer costs as recommended by many intellectual property firms. A PCT application is typically filed through the Receiving Office (RO) of the PCT member state of the applicant or an inventor. Alternatively, a PCT application can be filed with the World Intellectual Property Office (WIPO) through its International Bureau (IB) for countries that do not have an RO.

 

Once filed, a 30-month timetable for processing the PCT application before entering national or regional phase is determined from the earliest priority filing date. In some jurisdictions, an additional month is available (making the filing deadline at the end of 31 months), while others provide even longer extensions. During the time leading up to national-phase entry, publication of the patent application occurs 18 months from the earliest priority filing date, and an International Search Report (ISR) is typically issued anywhere from 9-22 months after filing (as part of the application “Request”). In some cases, an ISR is not issued before the 30/31-month national-phase deadline.

 

At the time of filing the PCT application, it is possible to designate which International Search Authority (ISA) will conduct the search to produce the ISR. Depending on the nature of the invention, selection should be carefully made due to the variation in search quality and technical competencies of the various ISAs as part of the IP strategy. Each ISA has its own search fee; thus, selection of the ISA has a cost component as well.

 

There are a significant number of ISAs to choose from including: the US, the EPO, Japan, Russia, China, South Korea, Australia, Canada, Finland, Sweden, Brazil, Austria, Spain, the NPI (Nordic Patent Institute for Norway, Denmark, and Iceland), most recently Israel (as of June 2012, currently only for Israeli applicants), and eventually India and Egypt (appointed in 2007 and 2009, respectively, but not yet in effect).

 

Some applicants believe that since substantial examination will only occur in the national phase of the PCT process, the value of a high-quality ISR is not worth additional expense. Thus, the selection of the ISA is driven for those applicants by cost, making South Korea a popular ISA. However, such reasoning is rather short-sighted. A high-quality search provides valuable upfront insight into what prosecution hurdles one can expect during national phase. In instances of favorable ISRs, it is possible to accelerate examination as part of the PCT-Patent Prosecution Highway, reducing the time to patent grant.

 

Broadly generalizing two other types of criteria for ISA selection, many applicants with inventions in the field of information technology and telecommunications select the US as the ISA due to differences in patentability criteria regarding software, while applicants with chemical and biotechnology inventions often select the EPO as the ISA due to the perceived greater rigor in the EPO’s search procedures.

 

After receiving the ISR, the applicant has two months to file amendments to the claims under Article 19 of the PCT Rules. If the applicant believes that the cited art in the ISR, and the written opinion regarding patentability accompanying the ISR, has merit with regard to the claims in the patent application, it is well worth considering amending the claims at this stage, which can simplify prosecution during national phase.

 

An international preliminary examination may optionally be requested in what is referred to as a “Demand.” The international preliminary examination is conducted by an authorized International Preliminary Examination Authority (IPEA) with an objective “to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.” Previously referred to as an International Preliminary Examination Report (IPER), a report of the IPEA is now known as an International Preliminary Report on Patentability (IPRP). The whole process outlined above must be completed with the 30/31-month timetable, before entering national phase

 

FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.

 

FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.