An international patent application, also known as a PCT application, is a type of patent application from which further patent applications can be filed.
What countries the international patent application is converted into depends on the countries in which protection is sought. This article outlines what an international patent application involves, and why you should consider applying for one.
Can I get a granted international patent for my concept?
The short answer is no. There is no such thing as an international patent per se, and so you cannot obtain a single granted patent which is enforceable all over the world.
However, the international patent application is instead a gateway application. Think of the international patent application as a departure lounge of an airport: you never settle and stay there permanently; you instead board your flight to different countries.
In patent terms, once you have filed an international patent application, there is a period in which you can wait and decide which countries you would like to file the patent application in, much like waiting for your flight to an exotic country. Having said that, I would hope that your wait in an airport is not as long as what is known as the ‘international phase’.
The international phase of an international patent application lasts either:
- 30 months from the date of filing the international application,
- or if you want to claim an earlier filing date, from filing a first ‘priority’ application.
The priority application could be a national patent application, such as a British or European patent application but could also be another international patent application. The international patent application should contain all of the information of the priority application, at least.
Please note that you do not need to stay in the international phase departure lounge until the end of 30 months, you can instead board the flight early and so convert your international patent application into a foreign application any time after the international application is filed. This is, however, not generally advised as one of the advantages of the international phase is that you get more time to decide where you would like to seek patent protection in the world.
When can I file an international patent application?
If the international patent application is based on another ‘priority’ application, then the deadline to file an international patent application is 12 months from the earliest filing date, known as the priority date. This 12-month period is known as the priority period and sets a foreign filing deadline for applicants to file further applications overseas. The foreign applications will have at least the same disclosure as the priority application.
If you have not filed a priority patent application to your concept, and the international patent application is the first filing, then in theory you can file the application whenever you like. It is, however, critical that you file the application as early as possible and before either you disclose your concept to the public or a third party discloses a similar concept.
The International Phase
Once an international application is filed and the official fees paid, the application is searched. This is much like any other searching process that national patent offices carry out: the application is searched and a report written about the patentability of the application (i.e., how new and clever the concept is).
If a positive search report is received, then this may give an indication of achieving grant of the application in national offices and may streamline examination in some national offices.
Please note, however, that the search report is only an opinion of the international search authority and different offices may not agree with the opinion. The choice of international search authority is dictated by which patent office receives the international patent application. The choice of which patent office receives the international patent application is dictated by the nationality or residence of the applicant.
If a negative search report is received, you have two options:
- Consider the comments and any prior art raised in the report and make a plan of action. Following the above analogy, this is your opportunity to go and have a peruse around Duty Free and consider your options. As the search report is only the opinion of the international examiner, and not binding, you may want to save resources and address any objections raised after you land in your chosen countries, i.e. in the examination stage of the national applications.
- Request international examination, also referred to as filing a demand. Here you can address the objections raised in the international search report and amend the application accordingly. The international examiner will then consider the arguments and/or amendments made and issue an international examination report. This is generally an expensive option, but useful if you choose countries which will be more likely to be swayed by the decision of the international examiner. This can also be useful if you are planning to convert the international application into multiple countries and want to save costs on downstream prosecution.
Where can I file a national patent application based on the international patent application?
You can convert the international patent application into any of the 158 contracting states before the end of the international phase. Please inform us of the countries you are interested in filing in and we can advise whether the national filings can stem from the international patent application.
Why would I choose to file an international patent application?
There are a few reasons why you would consider filing an international patent application:
- The deadline to file further patent applications based on the priority application is approaching and you are unsure which territories you would like to extend your patent protection. If the funds are available, then filing an international patent application essentially gives you another 18 months of time to decide where you would like to file.
- You have thought of some minor additions to your concept. The international patent gives you an opportunity to add information to the application on filing. It is to be noted, however, that any additional information will be treated as being filed on the filing date of the international patent application. If the new information is considered as suitable for independent protection, then we may advise that a brand-new patent application is drafted to this instead.
- You are interested in filing a foreign application in more than two overseas countries. This can reduce costs in the short term, i.e. instead of filing more than two national applications you file one international application and push the costs further downstream.
- You can amend the application centrally if changes need to be made, rather than having to amend each of your national patent applications. Changes made centrally should be cheaper overall compared to making changes at each national patent office.
Why wouldn’t I choose to file an international patent application?
- As with any patent application, and any flight, fees are required for the filing of the international application. If you are only interested in filing one or two foreign applications, or know exactly which territories you will want protection in in the future and want to minimise long-term costs, then it may be more cost effective for you to file these applications directly in the foreign territories of interest within the first 12 months of filing your priority application.
- If you are interested in seeking protection in countries not covered by the PCT. For example, Taiwan and Argentina are not covered, and so you would need to file national patent applications before the end of 12 months from the priority date. You can still also file an international patent application alongside, but it will only be cost effective if you are interested in filing in other countries.
In summary, the international patent application has a lot of advantages. It can lower costs in the short term as the filing of national patent applications are deferred. Although you cannot obtain worldwide protection, the opportunity to relax in the departure lounge before taking off to the national phases can be of huge assistance if you are unsure where you would like to extend your patent protection.
If you would like further information, please do not hesitate to contact us or give us a call on +44 (0) 1242 691 801 and one of our qualified attorneys would be more than happy to advise.
