PCT patent applications

Although there is no such thing as a "world patent" yet, a "world patent application" does exist. It is possible to seek patent protection for a large number of countries in the world with a single patent application. Such a world application is commonly referred to as an international application or a PCT-application. PCT is the abbreviation of "Patent Cooperation Treaty". Eventually, this international patent application must be converted into separate regional or national patent applications, but the decision to do so can be postponed for a considerable period of time.

 

A PCT-application, when?

There are in any case two situations in which an international patent application is the right solution. In the first place, a situation may occur where the decision to extend the Dutch patent application to foreign countries can only be taken just before the expiry of the priority year (see the information sheet Patents in foreign countries). If protection is desired in countries where a translation into the national language in question is required, direct filing of a patent application in those countries cannot be realised in that case. However, it is possible to file a PCT patent application in the Dutch language with the Netherlands Patent Office at Rijswijk, so that it is still possible to apply for a patent in those countries via that route. In the second situation, the desire to seek protection in a reasonably large number of countries by the end of the priority year does indeed exist, but it is still not clear in how many countries and in which countries protection will be required, or the financial means for filing separate patent applications may still be lacking. A PCT application makes it possible to apply for provisional protection for a large number of countries, whilst the final decision regarding the designation of countries can be postponed for a considerable period of time.

 

Procedure

Residents or nationals of the Netherlands may file a PCT application with the "Octrooicentrum Nederland" and also with the European Patent Office. All member states of the PCT-treaty are designated by default. During the first (international) phase a novelty search is performed by the European Patent Office. Moreover, a written opinion on whether the invention meets the requirements of novelty and inventive step is provided. The PCT application is published with the search report 18 months from the priority date; the written opinion will not be published. Informal comments on the written opinion can be filed, but no reply will be received from the responsible Authority. During the international phase the applicant may file a demand. Such a demand should be filed within the later of three months after the issuance of the search report or 22 months from the priority date. The filing of a demand allows for substantive correspondence with the PCT-authority on the patentability of the invention. The final opinion of this PCT-authority may prove advantageous on entry into the regional or national phase that follows the international phase. The final opinion will be made publicly available after the international phase has expired; the same holds for the written opinion. The international phase expires 30 months after the priority date. Generally, there will be more clarity as to the question if and in what countries protection should be eventually sought.

 

The costs

The honoraria for filing a PCT patent application are available upon request. In the case of a PCT patent application, the total cost, up to and including the grant of a patent, will be slightly higher than in the case of separate patent applications, but this is compensated by the fact that a great deal of the costs will only be payable at a later stage. Furthermore, if the project should be discontinued in the period from 12 to 30 months from the priority date, the costs incurred for seeking patent protection will be relatively low. The patent attorneys of De Vries & Metman can advise and act for you for international patent applications.