Your company does business in countries outside the US, or you’re planning on it. Maybe you’re just planning to manufacture products outside the US. Or maybe you simply aren’t sure yet. In any case, an international PCT application might be a great way to keep your options open and also get some additional feedback on patentability.
So, as the deadline to file approached, you talked it over with your patent attorney and decided to file a PCT application. That’s done, so now what?
This article walks you through what happens in the International Phase of a PCT application. As you probably already know, international patenting via a PCT application is essentially a two-step process. First, your PCT application sits in the International Phase for several months, then you must officially enter the examination process in the countries or foreign jurisdictions of your choosing.
International Phase of a PCT Application
This is the phase between (a) filing your PCT application and (b) the next step of continuing the process in individual jurisdictions around the world. It’s called the International Phase because you still have the option of entering into any of the PCT countries. Your application is truly “international.” This is in contrast to the next phase, where you must choose to continue in selected countries. Unsurprisingly, that next step is referred to as the National Phase.
The flow chart below maps out what you can typically expect after filing a PCT application. The numbers in each box correspond to the month in which that event is due (or when it typically occurs).
1. Patentability Search & Analysis – Automatic. Although a PCT application can be the first thing you file, it’s typically done within a year of your “local” filing – for our purposes, this is usually a US provisional or nonprovisional patent application. Around month 16, you’ll receive (via your patent attorney) what’s known as the International Search Report (ISR) and Written Opinion (WO). The International Search Authority performs a patentability search, and presents you with its results and analysis in the ISR/WO. This is a non-binding opinion, but it can be very helpful in assessing your chances of success. A positive ISR/WO can also be leveraged into faster examination in the national phase, if desired. However, no formal response is necessary. In most cases, the ISR/WO is the last thing you hear about before your national phase deadline at 30 or 31 months.
2. Article 19 Amendments – Optional. As mentioned above, you’re not required to respond to the ISR/WO. However, you might want to amend your patent claims based on the search results, to increase your chances of success later. Moreover, if the claims you ultimately get allowed in an issued patent match the ones in the published application, some countries permit you to pursue damages back to the date of publication (as opposed to the date your patent actually issued). You might want to make that more likely by adjusting your claims before the application publishes. This kind of amendment is therefore due at least 15 days before the publication date, which occurs right after the 18-month mark.
3. Supplementary Search – Optional. You’d like to think the original ISR/WO was an exhaustive search of every document and data source on the planet. That turns out not to be the case. Different Search Authorities gravitate toward different languages, data sources, etc., whether by design or by practical consideration. If you want a second opinion, you can request what’s called a “supplementary” search. This is usually done by a different search authority (of your choosing), and it results in a second ISR. The idea is to have this additional information before you decide whether to continue into the national phase. Because of that, the Supplementary ISR will be provided to you around the 28th month. Note: there is no second Written Opinion in this situation, just another list of search results.
4. Article 34 Amendments and Preliminary Examination – Optional. What if you’d like to amend your claims and then have those new claims assessed for patentability? Options 2 and 3 above won’t accomplish what you’re after. Article 19 amendments are simply published with the PCT publication at 18 months – no substantive review is performed. And the Supplementary Search is just a second search based on your original claims.
The answer: file a request for International Preliminary Examination under Article 34 (known as a “Demand”), where the authorities will reassess your likelihood of patentability and provide a written report. As part of that process, you’re allowed to make amendments to the claims, drawings, and specification. Although you cannot add new subject matter, this “refining” of your application can be quite helpful. You can also submit arguments with respect to the ISR/WO, if you like.
The examination authority will search for additional relevant prior art, analyze your amended claims (if you sent them in with the Demand), and issue an International Preliminary Report on Patentability (IPRP). Because, again, you’re expecting to obtain more information before deciding whether to proceed in the national phase, the report will come out around the 28th month.
The international phase of the PCT process can seem daunting. However, it’s all on a set timeline, and the sequence of events is normally quite simple while you wait for the national phase deadlines to arrive. Talk to your patent attorney about how it’s likely to go in your particular situation, and they’ll stay in touch as any decision points arise. As always, if you have any questions, please feel free to contact us. Good luck!
Blog Post © 2019 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.