Technological development and innovation are fundamental elements for economic growth and the advancement of society. However, protecting these inventions internationally can be a complex and costly process. To facilitate patent applications in multiple countries, the Patent Cooperation Treaty (PCT) was created. This international patent system allows inventors and companies to file a single international application that can be valid in 158 contracting states (a number reached with the recent subscription of Uruguay to the PCT). As we will explain, the aforementioned scheme simplifies the process of protecting inventions in various jurisdictions.
Characteristics of the PCT international patent system
In principle, the international patent system is based on cooperation between member countries to facilitate the protection of innovations in different markets. The main advantage of the PCT is that it avoids the need to file separate national or regional applications in each country. This ease allows applicants to save time and reduce initial costs while deciding in which countries they wish to obtain the definitive patent.
It is important to note that the PCT does not grant an international patent itself. Indeed, the final grant remains the responsibility of national or regional patent offices in each country, which occurs in the so-called “national phase” of the process.
To understand the importance of this international patent system, you should know that these innovation registrations are territorial, and there are two options for protecting an invention in several countries:
- Direct route or Paris Convention route. Specifically, this allows the applicant to file patent applications directly in each country where they wish to protect their invention. By filing a first application in a member country of the Paris Convention, the applicant has up to 12 months to file additional applications in other member countries, claiming the original filing date.
- PCT route. This is the one we are concerned with, and it consists of filing a single international application under the PCT, either directly or within 12 months from the first national application. This application is recognized in all contracting states, providing a uniform basis for subsequent national or regional patent applications.
Stages of the PCT procedure
In summary, the patent application process under the PCT international patent system consists of the following phases:
- Filing. The applicant files an international application with a national or regional office or directly with the World Intellectual Property Organization (WIPO). It is done in a single language, and single fees are paid.
- International search. Next, a designated Administration conducts a search of the prior art to determine the novelty and viability of the invention, providing a written opinion on its patentability.
- International publication. 18 months after the date of the first application, WIPO publishes the international application, making its content accessible to the public.
- Supplementary international search (optional). Certainly, if the applicant requests it, a second search can be conducted in other databases to increase the analysis coverage.
- International preliminary examination (optional). Also, at the applicant’s request, a second patentability examination can be performed on a revised version of the application.
- National phase. Approximately 30 months after the initial filing, the applicant must file individual applications in each country where they wish to obtain the definitive patent.
Of course, it is not the same as patenting an invention in Spain only. If what you need is to protect your innovation nationally, we invite you to read our guide in the link.
Who has access to the international patent system and how can they file their applications?
The PCT international patent system is designed to be accessible to a wide range of applicants. Multinational companies, universities, research centers, and small and medium-sized enterprises can use this mechanism to protect their innovations in various markets. In addition, individual inventors can also benefit from the PCT, provided they are nationals or residents of a contracting state.
To apply for a patent under the PCT, the inventor or company must file the application with the corresponding national patent office. In Spain, this would be the Spanish Patent and Trademark Office (OEPM). Or directly with WIPO, depending on the security regulations of each country. In some cases, the application can also be filed with regional patent offices, such as the European Patent Office (EPO) or the African Intellectual Property Organization (OAPI).
More and more patent offices are allowing the electronic filing of PCT applications, using tools such as ePCT-filing from WIPO. This system facilitates the process through automatic data validation, error reduction, and fee discounts for the use of electronic means.
Filing and processing costs
Of course, the process of applying for an international patent under the PCT international patent system involves several costs:
- International filing fee: 1,330 Swiss francs (approximately 1,423.10 euros).
- Search fee: Depending on the responsible administration, it can vary between 150 and 2,000 Swiss francs. This would be equivalent to 160.50 and 2,140 euros, respectively.
- Transmittal fee: Its amount varies depending on the receiving office.
Despite these costs, the PCT system allows for significant savings compared to filing individual applications in each country.
Benefits of the PCT international patent system
The PCT offers multiple advantages for applicants, patent offices, and the general public alike:
- More time to make decisions. Indeed, the applicant has up to 18 additional months to decide in which countries they wish to obtain the patent, manage translations, and pay national fees.
- Guarantee of formal acceptance. In this regard, if the application complies with PCT requirements, no national office can reject it for formal reasons.
- Strategic information. The international search report and written opinion help evaluate the patent’s viability before incurring additional expenses.
- Opportunity to modify the application. That is, before entering the national phase, the applicant can correct errors and dialogue with examiners to improve their chances of success.
- Optimization of the examination process. In particular, national offices can rely on PCT reports to accelerate their own evaluation process.
- Greater visibility of the invention. What’s more, publication on PATENTSCOPE allows for the global dissemination of the invention and attracts potential licensees.
We accompany you in the application and processing before the PCT international patent system
As you can see, the PCT is an essential tool for those seeking to protect their inventions strategically and efficiently internationally. Undoubtedly, this mechanism fosters innovation, ensuring that every patentable product can be efficiently protected in the global market.
Even so, having the support of specialized intellectual property professionals can make a difference in the success of the international patenting process. With a trajectory of more than a century in the registration and protection of patents, trademarks, and intellectual property in Spain and Europe, ISERN Patentes y Marcas offers comprehensive support at all stages of the PCT procedure.
From the initial application to the defense of rights once the patent is granted, our team of experts provides specialized legal advice to ensure that the process is carried out efficiently and securely. What’s more, we also ensure the protection of patents against possible improper uses by third parties.
If you would like more information or need assistance with your application before the PCT international patent system, visit any of our twelve offices in the main cities of Spain.