International PCT Patent Protection
The Patent Cooperation Treaty (PCT) is an international patent application system that helps applicants in seeking patent protection internationally for their inventions, meaning that if you file one single international PCT application, you can protect your invention in over 150 countries throughout the world, which are covered simultaneously but provisionally, allowing you to delay the extension time limits for up to 30 or 31 months for most countries, to when you must enter into national and/or regional phase in each designated Office, in order to protect your patent effectively. The PCT patent will be examined during this international phase as to its patentability, so in view of the examination result as to the assessment of the prospects and scope of protection of your invention, you may evaluate whether entering into national and regional phase is convenient or not, before major costs are incurred, as well as the countries or territories in which you are really interested and you are decided to invest for applying and pursuing the grant of your patent overseas.
International PCT patents are administered by the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland.
The following list of countries and regional Offices will be covered simultaneously by a PCT application. Total: 153, Status on December 12, 2019
|National Offices/Contracting States||Continent||Regional Office|
|ST Sao Tome and Principe||Africa|
|ZA South Africa||Africa|
|AG Antigua and Barbuda||America|
|CR Costa Rica||America|
|DO Dominican Republic||America|
|LC Saint Lucia||America|
|SV El Salvador||America|
|TT Trinidad and Tobago||America|
|US United States of America||America|
|VC Saint Vincent and the Grenadines||America|
|AE United Arab Emirates||Asia|
|BN Brunei Darussalam||Asia|
|IR Iran (Islamic Republic of)||Asia|
|KP Democratic People’s Republic of Korea||Asia|
|KR Republic of Korea||Asia|
|LA Lao People’s Democratic Republic||Asia|
|LK Sri Lanka||Asia|
|SA Saudi Arabia||Asia|
|MD Republic of Moldova||Europe|
|NZ New Zealand||Oceania|
|PG Papua New Guinea||Oceania|
|WS Samoa (on January 2, 2020)
|GM Gambia||Africa||AP ARIPO Patent|
|KE Kenya||Africa||AP ARIPO Patent|
|LS Lesotho||Africa||AP ARIPO Patent|
|MW Malawi||Africa||AP ARIPO Patent|
|MZ Mozambique||Africa||AP ARIPO Patent|
|SD Sudan||Africa||AP ARIPO Patent|
|SL Sierra Leone||Africa||AP ARIPO Patent|
|SZ Swaziland||Africa||AP ARIPO Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|TZ United Republic of Tanzania||Africa||AP ARIPO Patent|
|UG Uganda||Africa||AP ARIPO Patent|
|ZM Zambia||Africa||AP ARIPO Patent|
|ZW Zimbabwe||Africa||AP ARIPO Patent|
|AM Armenia||Asia||EA Eurasian Patent|
|AZ Azerbaijan Republic||Asia||EA Eurasian Patent|
|KG Kyrgyzstan||Asia||EA Eurasian Patent|
|KZ Kazakhstan||Asia||EA Eurasian Patent|
|MD Moldova||Asia||EA Eurasian Patent|
|TJ Tajikistan||Asia||EA Eurasian Patent|
|TM Turkmenistan||Asia||EA Eurasian Patent|
|BY Belarus||Europe||EA Eurasian Patent|
|RU Russian Federation||Europe||EA Eurasian Patent|
|TR Turkey||Asia||EP European Patent|
|AL Albania||Europe||EP European Patent|
|BA Bosnia and Herzegovina||Europe||EP European Patent (Country of Extension)|
|CH Switzerland||Europe||EP European Patent|
|IS Iceland||Europe||EP European Patent|
|MC Monaco||Europe||EP European Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|ME Montenegro||Europe||EP European Patent
(Country of Extension)
|MK Macedonia (The former Yugoslav Republic of)||Europe||EP European Patent|
|NO Norway||Europe||EP European Patent|
|RS Serbia||Europe||EP European Patent|
|SM San Marino||Europe||EP European Patent|
|AT Austria||Europe (EU)||EP European Patent|
|BE Belgium||Europe (EU)||EP European Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|BG Bulgaria||Europe (EU)||EP European Patent|
|CY Cyprus||Europe (EU)||EP European Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|CZ Czech Republic||Europe (EU)||EP European Patent|
|DE Germany||Europe (EU)||EP European Patent|
|DK Denmark||Europe (EU)||EP European Patent|
|EE Estonia||Europe (EU)||EP European Patent|
|ES Spain||Europe (EU)||EP European Patent|
|FI Finland||Europe (EU)||EP European Patent|
|FR France||Europe (EU)|
|GB UnitedKingdom||Europe (EU)||EP European Patent|
|GR Greece||Europe (EU)|
|HR Croatia||Europe (EU)||EP European Patent|
|HU Hungary||Europe (EU)||EP European Patent|
|IE Ireland||Europe (EU)|
|IT Italy||Europe (EU)|
|LI Liechtenstein||Europe (EU)||EP European Patent|
|LT Lithuania||Europe (EU)||EP European Patent|
|LU Luxembourg||Europe (EU)||EP European Patent|
|LV Latvia||Europe (EU)|
|MT Malta||Europe (EU)|
|NL Netherlands||Europe (EU)|
|PL Poland||Europe (EU)||EP European Patent|
|PT Portugal||Europe (EU)||EP European Patent|
|RO Romania||Europe (EU)||EP European Patent|
|SE Sweden||Europe (EU)||EP European Patent|
|SI Slovenia||Europe (EU)|
|SK Slovakia||Europe (EU)||EP European Patent|
|BF Burkina Faso||Africa||OA OAPI Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|BJ Benin||Africa||OA OAPI Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|BW Botswana||Africa||OA OAPI Patent|
|CF Central African Republic||Africa||OA OAPI Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible)|
|GH Ghana||Africa||OA OAPI Patent|
|GQ Equatorial Guinea||Africa|
|KM Comoros||Africa||OA OAPI Patent (Country that can only be designated by the regional Office; the national phase via the PCT is not possible. – Only PCTs filed after 25/05/2013 can designate this country for an OAPI patent. PCTs filed before that date, an extension of the OAPI Patent possible)|
|CI Côte d’Ivoire||Africa||OA OAPI Patent(2)|
Main Points and Advantages of a PCT Application
Priority Right Claim. Nationals of any signatory country of the Paris Convention, for instance Spain,may claim their non-extendable one year right of priority from the earliest national patent application whena PCT Patentapplication is filed internationally. The WIPO is also member of the Paris Convention, allowing applicants of a PCTPatent application to claim a priority right within 12 months (one year), if this is the earliest application, when they file successive patent applications in other national or regional patent Offices abroad that are members of the Paris Union.
Languages. A PCT patent application can be filed in at least one language from which no translation is required for either PCT international search or publication purposes. These can be published in one of the following languages; Spanish, English, French, German, Chinese, Japanese, Korean, Portuguese, Arabic and Russian.
Who May Apply? All natural persons and legal entities who are a resident or national of any signatory country may apply for a PCT.
Common Mistakes and Suggestions. As patent practitioners, we observe some but very often mistakes made by inventors, which can jeopardize the patent process, negatively affect its validity and protection or even can prevent the invention from being appropriately marketed or cause multiple Office objections after the PCT has entered the national stages abroad. We should suggest you to:
Choose A Patent Agent. You can act on your own for patent filing, but if you have no proficiency in international patent law practice and relevant conventions, then you should be guided and represented by qualified patent professionals (a registered IP agent), who are specialized and skilled in the undertaking of every complex tasks with the Office, either for the search an draft of the patent claims before it is filed, as well as for duly attending the usual arising actions throughout the examination proceedings, helping you to ensure the desired success during the process and hence on the result and strength of the enforceable right obtained, because failing to take a relevant action concerning the amendment or on the patentability during the international phase, might mean that you will multiply those Office objections by the number of countries where you decide later to enter into the national phase, considering the high expenses for responding these actions before each national Office.
Protect Before Disclosing. The invention should be secretly kept until the date of filing, since that prior disclosure may destroy the novelty requirement of the patent. – Search Before Filing. Before applying for a patent, it is advisable to carry out a patent search and evaluate the prior art and near patents to ensure your invention is new. Conducting a patent search is a smart first step to take before investing a lot of time and money into the patent process (not just a simple Google search to know if the product exists). Not only will you know if there are any similar patents in the prior art, you will be able to use the results to better define your invention and include only that patentable matter.
Marketability of Your Invention. You should figure out whether potential consumers will have any interest in the invention. Sometimes, inventions are not commercially attractive; they are not marketable and consumers or manufacturers show no interest on the patent or on its exploitation. The solution to a given problem is not completely solved, it is too complex or the idea of the value of the invention is impractical. – Patent Promotion. Do not wait for someone to buy your patent. If you will not be directly engaged in the exploitation of your invention, then you should actively promote it towards manufacturers, distributors, retailers or to anyone operating in the particular industrial field of the invention. This task should be done continuously, from the moment you have obtained the official receipt that confirms the filing of the patent application, so you can seek meanwhile for the needed investment, co-funding from anyone who is potentially interested in participating jointly with the costs for the extension of your patent rights abroad, or in the local marketability of the invention in exchange of a license agreement.
How Abecsa Can Help You. We can advise you if you are deciding on a valuable patent protection strategy and planning, you want to license your patent, or if your invention is being infringed by others and you want to take effective enforcement action in the Commercial Court. We would comply with the international practice and smooth the prosecution step by step and will always propose and take the best solution to overcome any official objection that arises during the procedure by taking care of the scope of the invention as well as foreseeing possible situations that could happen in the future for each specific patent application. The value-added patent services we provide can be summarized as follows:
Plan your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Full Assistance. Our registered attorney and other in-house patent professionals can represent you and assist you during all the International Phase if you want to file a PCT Patent application (WIPO), whether you want to claim an earlier priority right or it is a first filing internationally. Our fees for PCT patent filings and prosecution are fixed for each stage in this International Bureau so you can foresee the estimated costs for your patent protection project during the International Phase.
Search Services. We may carry out an in-depth prior art search worldwide referring to the technical information you have provide us, which would allow us to find if your invention has not been patented, before we draft your specification and apply for the desired patent on your behalf. This comprehensive search with our written report and a risk assessment is conducted by using tools and databases that are not publicly available. A good patent search can save you time, and a fortune in wasted resources, efforts, incurred significant promotional costs, and evade your potential legal liability in exploiting by mistake a non-patentable invention or a very close technology to someone else’s patent rights. This is a highly skilled and complex work that should be conducted by a specialized patent practitioner.
Patent Drafting and Filing. The initial strategic steps are decisive to achieve success in the future with your invention, therefore we take particular care and assist on the following features:
- Where to Protect Your First Patent. We can plan which would be the best Office to file your first patent application (priority), either National, European or Internationally, depending on the countries where you will likely market your invention, which we will electronically file in your name.
- What & How to Protect. Our in-house patent professionals can help you identifying and protecting only what is technically valuable, from the material you provide us with, and do not waste time or resources on getting a weak patent for those irrelevant matters. For this purpose, the inventor must provide us with all the relevant and detailed information in his hand to help us understand how the given technical problem is solved by the invention and allow our engineer to draft the best possible claims supporting specification, who will prepare andwrite in full, clear, concise, and exact terms of the abstract, description, backgrounds of the invention by citing and comparing the closest prior art documents, create the professional technical drawings if needed, and specify the claims that best describe your invention, being this the most important element of the patent draft, to be carefully considered and for which patent protection is sought.We will provide the preliminary patent draft for our client’s review and approval, before filing, within 15 to 20 working days, from the date we receive the full details of your invention or after the patent search is concluded.
- When to Apply. Commonly, it should be filed as soon as possible, ensuring you are the first-to-file the patent.
- Who. The applicant(s) and hence the future ownership of the patent should be always held by person or legal entity who will likely exploit the invention in the market.
Prosecution and Management. We will monitor the whole process of your PCT patent application throughout the International Phase and duly inform you of every official communication we receive from WIPO, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders well before the available time limits for each specific action.
Office Actions. If your patent is objected by the WIPO based on formal requirements or on patentability provisions or opposed by a third party, we may study the grounds of the objection or the relevance of the prior right on which the observations have been founded and file either the amendment or an Office action response in defense of your rights within the given deadlines, by planning the adequate strategy and ensuring success insofar as possible, in obtaining an objection-free application when the national phase is entered. Assistance is also provided if you want to file relevant observations against a likely conflicting application, by preparing the needed technical and legal observations in support. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged. – Litigation. In enforcement, we can represent and assist either the plaintiff or the defendant in utility model and patent rights infringement proceedings or in a cancellation action procedure (Invalidity request) before the competent Spanish or European Courts.
Other Actions. We can handle any associated matter on PCT patents such us the recordal of licenses, change of names and ownership transfers.
Watching Services. Abecsa can provide its clients with a local watch service in the Spanish and European registers, keeping an eye on what your competitors have filed. If we find a new published application which is potentially conflicting with your prior patent, then we will send you an alert proposing you the filing observations within the statutory deadline of the Office whenever possible.
Worldwide Patent Protection. Entering the National Phase of a PCT. Well before the 30-month period from the priority of your PCT patent application, we can help you choosing which countries in the world would you or your company like to effectively file your patent protection, by advising you about the next national or regional phase entry as a Euro-PCT patent (EPO), in other regional Offices (EAPO, OAPI, ARIPO) or even coordinate the filing in individual national patent Offices with the assistance of our local associates, in view of the countries where you intend to exploit, manufacture or market your invention, and depending on the nature of your invention and budget.
The International Phase of PCT Applications. The PCT application is subject to both searchand examination process, whichmay consist of the following stages until it is concluded by the national and regional phase entry in each country where applying for effective patent protection is desired.
Chapter I. This phase will be performed without interactionbetween the applicant and the examiner.
- Filing of the PCT Application. The filing of an international application must comply with the PCT formality requirements; filed in one required language, and one set of fees must be paid providing automatic coverage for all member states under this treaty.
- International Search Report and Written Opinion. The International Searching Authority (ISA), that is, the patent Office of one of the world’s major countries, will conduct a search of the relevant prior art, and will prepare and issue both an International Search Report (ISR) and a Written Opinion with the relevantly influencing documents on your invention’s potential patentability for novelty and inventive step. It is possible to amend the claims and also file informal comments in reply to the ISR.The International Searching Authorities (ISAs) are the national Offices of Australia, Austria, Brazil, Canada, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden and the United States of America, in addition to the following regional Offices, the European Patent Office and the Nordic Patent Institute.
- International Publication. The international patent application will be published as soon as possible after the expiration of 18 months from the priority date, disclosing the content of your application to public, which will include the ISR, whenever possible but if not, this shall be published separately. The published initial or amended claims will constitute the conferred “provisional protection” for many countries.
- Supplementary International Search Report. Optionally, the supplementary international search report can be requested, which is generally similar in content and appearance to the main ISR, but documents which have already been cited in the ISR are not repeated, unless it is needed. The main advantage ofthe supplementary international search reportis that it may reduce the risk of new patent documents and other technical literature being discovered in the national phase as it may enlarge the linguistic and technical scope of the documents searched and the explanation on the relevance of these may be more detailed than those cited in the ISR.
Chapter II. This phase will be executed with interaction between the applicant and the examiner, where amendments and arguments can be submitted, and an interview with the examiner is also possible.
- International Preliminary Examination. Within 22 months from the earliest priority dateand after international publication, an optional preliminary examination can be requested to one of the ISAs, which can be the Spanish OEPM or the European Office EPO, where an additional patentability examination will be conducted, usually on an amended version of your application and/or on the arguments addressing any objections raised in the written opinion, and ending with the subsequent preparation of the International Preliminary Report on Patentability (IPRP), which is not binding although its result should be considered by the national/regional Offices where the PCT is entered. Requesting the IPE is highly recommended if the PCT application has been negatively objected in the search and written opinion (ISR) so another opportunity is given to the applicant in order to obtain a more favorable result on its patentability. By demanding this IPE and/or by amending any possible remaining defects in the PCT application, can also help toreduce or eliminate the number of objections, that will be likely cited in the future, after the national or regional phase entry in each individual patent Office, particularly when the European regional phase has been entered, where EPO’s examination is in connection with and a continuation of the one conducted during the international phase by the WIPO.
- National or Regional Phase Entry. After the end of the PCT International Phase, you must enter the national and regional phases on or before 30 or 31 months from the priority date to pursue the grant of your patents directly before the national or regional patent Offices of the countries where patent protection is to be sought. The requirements for entering the national and regional phase to be fulfilled can vary for each country or region, and usually can involve the appointment of a localpatent agent, submitting specific formal documents, the payment of official fees and filing a translation of the application into a local language.
Information and Requirements to File an International PCT Application.
- The full name and address of the applicant(s)-holder(s).
- The full name and nationality of the inventor(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Full details of the invention on how the given technical problem is solved by your invention.
- The details of the earliest filed patent application on which Convention Priority is to be claimed if any, within 12 months from the first patent application date, along with the Certificate of Priority.
- Your instructions on how we should proceed and approval of the likely costs.
- Your upfront payment of issued invoice by bank transfer.
- A POA signed by the applicant (no legalization) is required by the International Bureau.
Please do contact us via our contact form if you need advice on any patent issues such as:
- Filing your PCT patent application.
- Filing any arguments and/or technical amendments in reply to the ISR or IPE.
- Entering the regional phase of a PCTin the European Patent Office (EPO).
- Entering the national phase of a PCT in Spain(OEPM).
- Looking for prior art searching or a freedom-to-operate opinion and report.
- Patent watching services.
- Revising or amending your patent draft by our engineer.
- Taking legal action against another person or company who is marketing or exploiting your invention without your consent.
- Translating your patent specification into any needed procedural language.
- Renewing your patent annually.
- Licensing the use of your invention or selling your patent ensuring the assignment to other person or company.
- Protecting your know-how and trade secrets.
Confidentiality. If this is the first filing of your invention, it is important that you do not disclose the technical characteristics of your invention before you apply for patent protection, this may mean that you cannot patent it, or your patent may be declared invalid by anyone who proves this preceding disclosure (lack of novelty or inventive step). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.