International Provisional Patent Application

If you’re searching for patent protection abroad, an international provisional patent application is a viable option. It provides a one-year window to establish a priority date that corresponds to the 12-month benefit available under U.S. patent law.

A PCT international patent application must be filed at a designated Receiving Office (RO). There, it undergoes an international search and written opinion on the patentability of your invention.

The International Phase

The international phase is an integral component of the provisional patent process and can take years to conclude. As this can be a complex step, working with an experienced attorney is recommended in order to ensure all details are thoroughly understood and carried out accordingly.

Before pursuing an international provisional patent, you must first file an international application under the PCT. This will assign an international filing date in each of the contracting states and generate a search report and written opinion regarding patentability of your invention.

Once you select a Receiving Office (RO), there are various options to choose from. Currently, you have two choices: either file with the United States Patent and Trademark Office (USPTO) or one of its regional counterparts in one of the contracting states such as European Patent Office, Korean Intellectual Property Office, IP Australia, Israel Patent Office, Singapore IP Office or Japanese Patent Office.

Once your international patent application is filed with a receiving office, it will be thoroughly searched and examined by that office and eventually lead to a written opinion from the International Searching Authority (ISA). ISA will then issue both an International Search Report as well as an International Preliminary Report on Patentability.

By having your international application examined in other countries before it enters the national phase, you could save time and money if both the international search report and written opinion are positive. Furthermore, this helps avoid having to file separate applications in each of the contracting states.

Before filing an international patent application in any country, you must translate it into the language of that nation if not already done. After that, ensure to meet all relevant national and regional requirements in each jurisdiction by paying any applicable fees.

National and regional requirements vary by country, but typically involve appointing a foreign attorney as your representative, filing some formal documents, paying any relevant official fees. Furthermore, you may need to translate the international patent application into the local official language if this has not already been done.

The National Phase

The national phase of an international provisional patent follows the international phase, and involves processing the application before each Office representing or acting for a Contracting State that has been designated in the international application (see International Phase).

In this stage, you submit the application to the national or regional patent offices of the countries in which you wish to seek protection. You must meet their specific requirements, pay their fees, file application translations if needed and engage local representatives where applicable.

You can start the national phase of an international patent application as early as 30 months from your filing date, provided you have claimed priority in an earlier application. This extra time may help assess whether there are sufficient chances for obtaining patent protection in each country in which you wish to pursue protection.

As you progress into the national phase, it may be beneficial to request examination under Chapter II of the PCT, which is nonbinding and provides central prosecution before one patent office (see Section 4.022 below). This option can be especially advantageous for applicants who are seeking a positive IPRP or who have received negative WOISAs that they wish to address.

Once the national phase is complete, WIPO should publish your international patent application along with a search report and written opinion. This publication makes it simpler for national and regional patent offices to examine your application in accordance with their own laws, regulations, and practices.

Your national or regional patent Offices will have access to the search report and written opinion issued by WIPO through its International Search Database, as well as any other information made public through that same database. This can help them decide whether or not to approve your patent application.

Some national and regional Offices provide fee reductions during this stage, such as those for natural persons, universities, not-for-profit research institutes and small and medium-sized enterprises (SMEs). Further details about these discounts can be found in the relevant National Chapters of the PCT Applicant’s Guide or PCT Newsletters.

The International Search Report

The international search report (or Article 15(5) search) contains a list of documents that might affect the patentability of your invention as disclosed in your international application. This data can help you decide whether or not it’s worthwhile to pursue your patent application through the PCT route.

During the international phase, your application will be forwarded to one or more of the competent national/regional patent offices (for a PCT application filed at the UK Intellectual Property Office, this would be EPO as the International Searching Authority). At this stage, experienced staff from these patent Offices conducts an exhaustive search of relevant patent documents and technical literature in all languages commonly used for PCT applications – Chinese, English, German, Japanese – as well as certain non-PCT countries that are party to the PCT such as France, Korea, Russian and Spanish). All searches are carried out according to standards established by the PCT itself.

Within six weeks of requesting a search, you should receive an international search report. It should include references to published patent documents and technical journal articles that might be pertinent to the invention disclosed in your international application.

Your ISA will also prepare a written opinion assessing whether your invention meets the essential criteria for PCT patentability: novelty, inventive step (non-obviousness), and industrial applicability. This written assessment, which is sent to you along with the search report, can be invaluable in assessing your chances of securing a patent.

Normally, the International Search Authority (ISA) will create a search report and issue its written opinion promptly after your provisional application has been filed. However, they may delay issuing the international search report if they feel your description, claims, or drawings are insufficiently clear for them to conduct an accurate and meaningful search of the subject matter at issue.

About 16 months after filing your provisional application, the International Search Authority (ISA) will issue a supplementary international search report which includes additional patent documents and technical literature that might be pertinent to your invention as disclosed by your provisional application. Although less comprehensive than the main international search report, it typically provides more references to relevant patent documents and technical literature.

The Written Opinion

When applying for patent protection abroad, being prepared is key. To make this easier, the PCT system offers a suite of tools designed to make the process smoother.

For example, the International Search Authority (ISA) has several strategies at their disposal when searching for prior art. These include using powerful computers and being able to access data that would otherwise be impossible due to foreign bureaucracy.

The ISA provides you with a non-binding but comprehensive international search report on your application. This is the best way to assess whether your claims meet the PCT patent law requirements and can serve as a benchmark for future application filings.

In addition to the search report, you are provided with an expertly written and published written opinion outlining ISA’s findings. This is invaluable evidence that can be relied upon when dealing with an unfriendly patent office in one of the designated Contracting States.

In conclusion, the international search report and written opinion provided are just the beginning. To get the most out of the PCT system, it is essential that your patent application be examined by a knowledgeable legal team. Selecting an experienced attorney can save time, money and heartache in the long run; contact us now to arrange a consultation with one of our professionals!

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