The procedure under the Patent Co-operation Treaty (PCT) provides for centralised filing and prosecution of patent applications in a single language before a single authority.
International applications progress through two main phases, the “International Phase” before the PCT authorities where prosecution is in a single language, followed by the “National Phase” where prosecution continues before one or many selected individual national or regional patent offices.
In the international phase, PCT procedure is divided into two sub procedures, Chapter I procedure in which centralised filing for a number of states and where a centralised search is provided, with a lower level of examination, and Chapter II examination in which centralised examination before a single authority in a single language is provided to a higher level. Chapter II examination is optional, but recommended.
At the end of the international PCT procedure, which lasts in general a maximum of 30 months from the first filing date (or the priority date), to continue protection before any national or regional patent office, separate individual patent applications must be filed at those particular national or regional offices. This stage is known as the national/regional phase of the international application. Once the patents enter their national and regional phases, further search and examination occurs in those countries. At this stage, proceedings are in the languages of the selected national states. As of October 2005, 128 countries are party to the Patent Co-operation Treaty (see attached appendix).
Whilst the cost of filing and prosecuting an international application under the PCT is in addition to the costs of prosecuting the national patent applications in the national/regional phases, there is still a significant cost saving available compared to the alternative of multiple foreign national patents. Firstly, the cost of filing in a number of different countries is delayed for up to 30 months compared to filing applications directly at those national/regional offices. Secondly, much of the search and prosecution procedure can be carried out in a single language before a single authority, avoiding much of the translation and administrative work which would otherwise occur individually before the respective national or regional patent offices.
The international authorities are incapable of actually granting a patent at the end of the international phase, this only occurs during the subsequent national phase. However, they do produce an international preliminary examination report giving their comments on the novelty, inventive step and industrial applicability of the application.
A favourable international preliminary examination report generally makes the subsequent processing of the national and regional patents before their respective national and regional patent offices run much more smoothly, and there is considerable saving in time, effort and cost to be had by obtaining a favorable international preliminary examination report from the International Preliminary Examining Authority.