IP Academy

What is PCT

Author: Danielle Carvey

Filing patent applications in more than one jurisdiction can prove to be a potentially complex process, but the PatentCooperationTreaty (PCT) provides for a simplified and streamlined route for the filing of patent applications internationally.

The PCT entered into force in 1978, and is administered by the World Intellectual Property Organisation (WIPO). The multilateral treaty currently incorporates 153 national and regional offices, including the IP 5; China, South Korea, the US, Japan, and the EPO.

Through the PCT, applicants can file one patent application, accompanied by the payment of one set of fees, designating any or all PCT member states for further filing. The PCT does not provide for an "international patent", since patent protection can only be valid within a given national/regional territorial jurisdiction. Rather, it serves as a basis for further national patent proceedings in the countries of the applicant(s) interest, meaning a patent obtained via the PCT route is still national or regional in nature.

The process of filing an application through the PCT begins with the international phase. Typically, applicants will first file a local patent application which establishes an earlier priority date. The PCT application should then be filed with a "Receiving Office" (RO) within 12 months of the filing of the priority application. However, the step of a first local filing is not obligatory and may be omitted.

The RO is either a national or competent regional office of the PCT contracting state in which at least one of the applicant(s) reside or are nationals of. The International Bureau of WIPO also acts as the RO. Once received by the RO, the international application will be checked to ensure it has met the PCT formal requirements.

A PCT application will then be subject to an international search, undertaken by a competent International Searching Authority (ISA). This will result in an InternationalSearchReport (ISR) which is established within 3 months from the receipt of the copy of the international application transmitted by the RO to the competent ISA, or within 9 months from the earliest date of filing if priority was claimed, whichever time limit expires later.

The ISR will detail any prior art found which may impact the patentability of the subject matter contained within the international application. A preliminary WrittenOpinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet the criteria of novelty, inventive step and industrial applicability set forth by the Treaty. The same WOISA will later be used as the International Preliminary Report on Patentability (IPRP) if a demand for further International Preliminary Examination is not made.

Any amendments to the claims in the application may be made within 2 months of the establishment of the ISR or 16 months from the priority date, whichever time limit expires later.

Provided the application is not withdrawn by this stage, the international application is then published on PatentScope by the International Bureau of WIPO after the expiration of 18 months from the earliest priority date.

Applicants may further request an optional international preliminary examination either within 3 months from the date of transmittal to the applicant of the ISR and WOISA, or 22 months from the priority date, whichever expires later.

Requesting an international preliminary examination can be useful to applicants who wish to amend, or raise arguments in relation to, their application in light of any issues highlighted in the WOISA, as this may result in a more positive International Preliminary Report on Patentability (IPRP)/International Preliminary Examination Report (IPER). Moreover, requesting such an examination may also help to better estimate the applicant’s chances of success in further proceedings in the national/regional phases.

Since an international application does not result in automatic national protection for an invention, it is required to enter the PCT national/regional phase in the applicant’s jurisdictions of interest within 30/31 months from the earliest priority date. The exact time limit depends on the designated states/organisations for entry. The applicant should pay the necessary national/regional fees, as well as file any translations of the application and other documents that may be required upon entry.

Thereafter, the application will be examined by each individual national or regional office of the designated states, and patents will be granted in each state respectively, depending on whether it meets requirements of patentability established by national law of the designated states.

Applicants may also be obliged or recommended to appoint a local patent agent in each of the respective designated jurisdictions.

Filing an international PCT application is an advantageous opportunity for applicants to prolong the time period for making a decision as to which jurisdictions to pursue protection in, estimate their inventions, and seek investor support for their filings from 12 months under the Paris Convention to 30/31 months. Furthermore, some national/regional offices provide a number of discounts for issued ISR/IPRP in respect of international applications, helping to reduce costs for obtaining a patent.

If you have any questions regarding the PCT, or are interested in filing, please contact us.

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Industrial design protection is widely utilised across the globe, with a registered design right preventing others from appropriating or imitating the appearance of a product. However, the obtainment of a design right, alongside a certificate of registration, is often not the final step of design protection.

Once granted, it is important to ensure that a design right is maintained in each jurisdiction in which the owner utilises the design. In order to uphold and maintain such rights, many countries require the filing of a request for design renewal and the payment of annuity/renewal fees.

The renewal process varies between countries and even between regional IP systems. As an example, some of the largest IP offices worldwide include the US, South Korea and China, and they all have different procedures in relation to the renewal of design rights and annuities.

In South Korea, for example, the validity term for an industrial design right consists of 20 years counted from the date of filing. The legislation in the country outlines that once the right has been granted, the registration fee for an industrial design should be paid within 3 months from receipt of the Notice of Allowance.

The registration fee in South Korea is inclusive of the payment for the first 3 years of the design right lifecycle, meaning that further annuity payments should be made in respect of the 4th years onwards. The payment of each annuity fee thereafter is due prior to the anniversary of the registration date for each respective year.

Whilst it is recommended that the payment of an annuity fee is made within the prescribed time, a grace period of 6 months exists in South Korea, allowing for the late payment of said fee when accompanied by payment of a surcharge.

In China, industrial designs with a filing date on or after June 1, 2021 are in force for 15 years from the date of filing, whilst those with a filing date occurring on or before May 31, 2021 are in force for 10 years from the date of filing.

Once granted, the official grant fee should be paid within two months from the date of receipt of the notification to grant a certificate, however, unlike South Korea, this fee is not inclusive of the first annuity. Instead, the first renewal payment, as well as a stamp tax for the design certificate in China, are to be paid separately upon registration of a design.

Further annual fees are to be paid in advance, during the month preceding the anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge.

In the US, design patents with an application filing date occurring on or after May 13, 2015 are valid for 15 years from the date of issuance, whilst those filed prior to May 13, 2015 have a term of 14 years from the date of issuance.

Unlike the aforementioned countries, as well as many other jurisdictions, design patents in the US are not subject to maintenance fees or annuities.

For those who wish to file for and obtain design rights in multiple jurisdictions, international and regional systems exist which allow applicants to obtain protection in several countries in an often more efficient and cost effective way than filing in individual states separately. As with each jurisdiction, these design right systems possess their own procedures for renewal fees and payment.

An industrial design right applied for via the Hague System, for example, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. They are valid for an initial period of five years from the date of the international registration, which is defined as the date of filing of the international application.

International industrial design rights may be renewed for two initial further 5-year periods, prolonging the validity term for up to 15 years. Thereafter, a right can be renewed up to the limit of years prescribed in the national or regional law of each designated state in which the design is granted. The WIPO will remind the right holder to renew a design six months prior to the due date of the renewal.

A Community Design is a design right registered via the regional system of the European Union Intellectual Property Office (EUIPO). Once a community design has been granted, it is valid for a period of 5 years counted from the date of filing.

It is possible for rights owners to renew the design a further four times for periods of 5 years respectively, meaning a EUIPO registered community design can be valid for a full term of 25 years in total.

The renewal fees are due during the last 6 months of any given 5 year protection period, and late renewal is possible within a six-month grace period by paying a corresponding surcharge.

Industrial designs filed and granted through the African Regional Intellectual Property Organization (ARIPO) have a validity term of 10 years from the filing date. The annuity fees are due on each anniversary of the filing date and are payable in respect of each designated state. They can also be paid within 6 months after the due date on the condition that the corresponding surcharge is paid.

As industrial design renewal procedures are subject to variation from country to country, applicants should take note of any annuity payment deadlines and fees in each jurisdiction they wish to maintain design rights. If you require advice on the renewal of design rights, or simply further information, please contact us.

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Today, we again discuss the three “pillars” of patent law and explore industrial application or applicability, which is one of the patentability requirements. The invention is considered to be industrially applicable if subject matter experts can reproduce and make use of it based on their general knowledge.

The definition is more or less the same in many European countries: the possibility to be “made or used in any kind of industry, including agriculture” (Art. 57, the EPC).

Until recently, interpretation of the industrial application was limited to what is stated above, but in 2005 the Boards of Appeal of the EPO ruled that the requirement of industrial application is only fulfilled if there is commercial benefit from the practical application of the invention.

Fun fact: this requirement excludes a range of absurd inventions from being considered as patentable. For example, if an invention contradicts the laws of physics, it cannot be industrially applicable and is, therefore, not patentable.

The first step on the way to securing your rights is filing of an application. However, there is one issue to consider before launching the process – can you make your first filing abroad?

In many countries, there is a foreign filing license requirement obliging inventors to file first in the country where they created an invention OR obliging nationals of the country to file in their home country before seeking protection abroad.

For example, India and Kenya apply this requirement to their nationals or residents only, while Russia, China, and the USA require first filing of applications for the inventions made in the country regardless of the inventor’s nationality.

If you are not sure where to file first, seek legal advice or feel free to contact us for support.