International patent application - PCT

A preferred way to obtain appropriate patent protection on international markets is to file an international patent application under the Patent Cooperation Treaty. In this way, the effect of filing a national application is achieved in all member states of the PCT (currently 151 states).

This saves the applicant from having to make costly translations and to file numerous national or regional patent applications immediately, especially if he wants to extend the protection of an invention to further countries after the priority period from a first national patent application has expired. The World Intellectual Property Organization(WIPO) based in Geneva is responsible for the formal processing of a PCT application. The substantive work (search, preliminary examination) has been delegated to several national/regional patent offices, whose respective jurisdiction is determined by the applicant's domicile or nationality.

However, the international patent application is not a WORLD PATENT, which automatically provides full protection in all regions of the world. Since property rights are generally bound to the national territories, there will be no legal basis for uniform worldwide protection in the foreseeable future (even if the press repeatedly refers to world patents in error).

With the filing of a PCT application, which can be made e.g. at the European Patent Office, the international phase begins, in which the application is treated uniformly. In this phase only one single procedure is conducted, which can be controlled completely from the applicant's home country. The designated authority performs a patent search on the subject matter of the invention and draws up an International Search Report listing the prior art to be considered for the assessment of patentability. Following the search, the applicant can request an International Preliminary Examination. However, the international procedure does not provide for a final decision on the grant of a patent. The procedure must be transferred to national or regional proceedings at the latest after 30 months from the earliest priority date (some patent offices have extended this period to 31 months). The applicant must then decide in which countries or regions he wishes to continue the patent granting procedure before the competent authorities. For example, the applicant may decide to start patent proceedings at the EPO to obtain a European patent, another regional procedure to obtain a Eurasian patent, and possibly national patent proceedings in the USA, Japan, China, etc.