The Patent Cooperation Treaty (PCT) can simplify the process of obtaining patents in many countries. A PCT application for the invention of interest is filed with the PCT authorities, who preliminarily assess the invention’s patentability. The assessment helps one decide if the cost and effort of pursuing patent protection for the invention in specific countries is justifiable.
The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva. The Canadian Intellectual Property Office (CIPO) initially acts as a “Receiving Office” in which nationals or residents of Canada may file PCT applications seeking patent protection in:
Albania |
Dominican
Republic |
Lesotho |
Saint Lucia |
The CIPO inspects the application to verify that it meets basic PCT formal requirements, then transmits the application to the WIPO, which conducts a further formalities check. If the application meets the formal requirements, the CIPO processes the application as discussed below.
A PCT application may be an originating application—if no previous application to patent the invention has been filed. Alternatively, a PCT application may be filed within one year of the filing of an earlier originating application—in which case the PCT application may claim priority retroactively to the filing date of the earlier application.
Substantive processing of a PCT application begins with the CIPO’s issue of a search report and patentability opinion. The search report lists prior art references the CIPO considers relevant. The opinion indicates whether the CIPO considers the invention to be novel and inventive in comparison to the prior art, and whether the invention has the required degree of industrial applicability. If the search report and opinion are favourable (i.e. if they do not cast significant doubt on the ability to obtain a patent of commercially worthwhile scope) then the applicant may elect to proceed. If the search report and opinion are highly unfavourable and if there is no realistic prospect of overcoming the unfavourable opinion, the applicant may decide to abandon the application to avoid further costs.
Significant cost savings may be realized via the PCT. Although there are exceptions, it often turns out that in order to preserve patent rights in many foreign countries without the benefit of the PCT, one must file patent applications in each country of interest within one year of the date of filing an original non-PCT application. Such foreign filing programs can be cumbersome and expensive. Typically, a host of different procedures must be implemented, on an urgent basis, in different countries. Filing fees, translation costs and other charges are normally incurred for each country. Moreover, most patent offices do not assess a patent application’s novelty and inventiveness until the application has been on file for well over one year. Accordingly, to meet the one year deadline, one must often decide whether or not to file foreign patent applications solely on the basis of a search conducted before the originally-filed patent application was prepared. The invention covered by that application may differ significantly from the subject matter covered by the search. A PCT search report and patentability opinion can be cost-effective tools for assessing the viability of a foreign patenting program.
Eighteen months after the originating application is filed, WIPO publishes the PCT application and the search report (the patentability opinion is not published at this stage). The applicant may choose to enter the national phase (i.e. submit the patent application to the patent office of each country of interest) at either twenty or thirty months after the originating application’s filing date. The national phase is entered at twenty months if the applicant does not wish to have the CIPO conduct a further examination of the application. The chosen national phase patent offices receive the search report and patentability opinion from WIPO. Informal comments on an unfavourable opinion can be submitted to the CIPO for forwarding to the chosen patent offices with the opinion, in an effort to blunt the impact of the unfavourable opinion. Each patent office decides whether and to what extent to take the comments into account.
If the applicant opts for further examination by the CIPO—for example, in an effort to overcome an unfavourable opinion—then an examination fee (currently about CA $1,600) is paid. The further examination phase, if pursued, lasts seven to sixteen months, during which the CIPO may issue further opinions, to which the applicant may reply by amending the application and submitting arguments in an attempt to obtain claims free of conflict with the prior art. The phase concludes with the CIPO’s issue of an “international preliminary report on patentability” which is made available to the chosen national patent offices, if the application enters the national phase.
When the national phase is entered in the chosen countries, the applicant pursues separate patent applications pursuant to the laws of each chosen country to obtain separate patents in each country. The PCT simplifies the process by enabling one to pursue a single English language PCT application for up to thirty months before incurring the cost of filing and processing multiple foreign applications.
A PCT application may also enter the European regional phase as a European patent application capable of yielding patent protection in Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece (the Hellenic Republic), Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. European patent protection can be extended to Albania, Bosnia, and Herzegovina, the former Yugoslav Republic of Macedonia and Serbia and Montenegro (formerly known as the Federal Republic of Yugoslavia). (Direct entry into the national phase is not available for Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands or Slovenia—those countries may be covered only by sub-designating them in a European patent application).
A PCT application may also: