Welcome readers, to the fascinating world of international patent filing. Picture navigating through a complex maze with two primary routes: the Patent Cooperation Treaty (PCT) and direct national filings. Each route presents distinct advantages and challenges to securing global patent protection. Although a single “International Patent” that covers the entire globe doesn’t exist, there’s no need to worry. Here we will demystify these options, providing clear insights with a touch of humour to ensure that your course/journey is both informative and engaging.
Understanding the Basics: Two Routes to Global Patent Protection
Patent rights are territorial, meaning that protection must be independently sought in each country of choice, such choice may be driven by diverse factors such as anticipated market potential or blocking off a competition. There are two primary strategies – the PCT route, and the Paris Convention route which are direct national filings.
Each approach has distinct procedures and implications, that influence an applicant’s choice – based on factors like cost, timing, and flexibility. Understanding these pathways will help choose the best strategy for securing global patent protection effectively. A comparison of timelines for each of the routes is depicted below:
(Source: WIPO)
Factors to Consider When Deciding the Route
When deciding between the PCT route and direct filing, at least the following factors need to be considered:
- Number of Territories: How many countries does the applicant(s) plan to seek protection in?
- Business Interest: Which markets are the most relevant from a business perspective?
- Cost: What is the budget?
- Scope of Invention: How broadly applicable is the invention across different jurisdictions (or markets)?
- Time Sensitivity: How quickly is patent protection needed?
- Resource Availability: Are there administrative resources to manage multiple national filings?
The PCT Route: The ‘Longer’ Path
The PCT, a multilateral treaty, is facilitated by the World Intellectual Property Organization (WIPO), which offers a streamlined process for securing patent protection in multiple countries. By submitting a single PCT application, the applicant(s) gets up to 30 or 31 months from the date of priority, the date of the very first filing of the invention anywhere, depending on the countries of interest where the applicant(s) wishes to file for patent protection. This extended timeline provides the applicant(s) with the flexibility to evaluate market potential and fine-tune their strategy without the immediate burden of filing in each jurisdiction.
The Two Phases of PCT:
- Phase 1: International Phase (18 months): During this phase, a single international application is filed, which is examined, and an international search report (ISR) along with a written opinion on patentability is issued. This phase lasts for 18 months.
- Phase 2: National Phase (12 months): After the international phase, the application enters the national phase, involving filing in individual countries. This phase adds another 12 months to the timeline, making the total timeline up to 30 months from the earliest priority date.
From a strategic perspective, the PCT route can be advantageous in the early stages of the patent application process. Submitting a single application simplifies the initial procedure. Additionally, the PCT offers the ISR and the written opinion on patentability, providing preliminary insights into the likelihood of the invention being granted a patent before committing to national filings.
In India, applicant(s) classified as startups, small entities, female, government departments, government controlled/financed institutions (or companies) can request for an expediated examination from the Indian Patent Office (IPO). Moreover, applicant(s) who do not fall into the categories can still expediate the process by filing the patent application through the PCT route, designation India as the competent International Searching Authority (ISA). This approach helps accelerate the patent prosecution process in India. Also, in India, if a Complete Specification (CS) has not yet been filed for the corresponding Provisional Specification (PS), and the deadline is approaching, applicants who also plan to file in foreign countries can benefit from a strategic approach. The applicant can file the CS promptly within the remaining time and then submit a PCT application. This will provide additional time for pursuing international patent protection.
Furthermore, if the applicant intends to assign the patent application to another party, the likelihood of achieving a higher valuation is greater for PCT application compared to that of non-PCT application. This is because the market outlook for the new applicant may differ, and they have the advantage of using the PCT application to file in countries of interest, within the stipulated timeline.
However, the PCT route has its limitations. Although it streamlines the initial filing process, it doesn’t grant patents. Instead, it facilitates the process of entering national phases, which means that costs will include both the PCT fees and the expenses associated with individual country filings. The 18-month period allowed for evaluating market strategies and making informed decisions about where to seek protection can result in accumulated overall costs. Additionally, the 30-month timeline can delay the actual granting of patents compared to direct filing route. Furthermore, not every jurisdiction is bound by the PCT, including jurisdictions like Taiwan, Venezuela, Pakistan, Bangladesh, and others.
Direct Filing: The ‘Express’ Lane
If there is a clear vision of where the invention will make the most impact, direct national filings could be the optimal choice. This approach allows bypassing the 30-month waiting period associated with the PCT system, facilitating quicker patent protection in specific markets. The cost here only involves the fees for filing the patent application in individual countries, unlike the PCT route that additionally requires PCT fees.
Direct filings offer the flexibility to tailor patent applications to meet the specific requirements of each jurisdiction, enhancing the likelihood of success in securing protection. Additionally, applicant(s) can expedite the patent examination process through the Patent Prosecution Highway (PPH) program, which allows for accelerated processing if the claims have been deemed patentable or allowable by another participating office. The PPH program is implemented based on bilateral agreements between intellectual property offices. By leveraging the PPH, applicant(s) can build a global patent portfolio more quickly and efficiently. PPH applications tend to have higher grant rates compared to non-PPH applications, leading to a more streamlined and cost-effective path to patent protection. Similarly, through the PCT route, applicant(s) can further expedite the national phase examination by opting for the PCT-Patent Prosecution Highway (PCT-PPH) or Global PPH programs, ensuring a faster and more efficient patent prosecution process worldwide.
However, the direct filing route has its own set of challenges. The direct filing route requires decisions within 12 months, and for non-English speaking countries, the time needed for authorized translators to prepare the patent specification in the national language can be a factor. This can affect the filing timeline, due to potential delays in translation queues.
For patent application(s), that involves inventions related to field of rapidly evolving technologies (for example Blockchain, Automation, Gaming, etc.), the PCT route may not be ideal. Such patent application(s) require accelerated processing from an enforceability perspective. Thus, the direct filing route may be ideal in such scenarios. Decisions on direct filings must be made within 12 months of the initial application, a timeline that can be quite restrictive. Additionally, navigating the different rules, fees, and language requirements of various countries can add significant complexity and administrative overhead. Unlike the PCT route, direct filings require immediate decisions for each national office, potentially leading to missed opportunities to adapt the strategy based on evolving market perspectives.
PCT vs. Direct Filing: A comparative analysis
Making the Right Choice
Selecting between the PCT route and direct filing hinges on commercial strategy, budget, and knowledge of target markets. The PCT route is well-suited for those who need additional time to evaluate global opportunities and prefer a streamlined initial process. On the other hand, if there is a well-defined target market and faster protection is sought, direct filing provides a more immediate solution, though it comes with higher initial costs and increased complexity.
Navigating the complexities of international patent filing can be challenging but seeking specialized legal assistance can provide invaluable support. Skilled experts can offer tailored advice and help strategize filings based on the strength of the invention as claimed, market evaluation, and budgeting. Towards this end, they can conduct a thorough analysis of potential markets, assist with forecasting costs, handle administrative paperwork, and interpret international search reports. By partnering with experts, an applicant can confidently cruise the international patent landscape, ensuring that the invention is protected in the most efficient and effective way possible. Whether opting for the PCT route or the direct filing route, understanding available options and seeking guidance is crucial for successful international patent protection to ensure legal bases are covered as you venture into global markets. Stay tuned for more insights into patents and legal strategies.
References
- Protecting your Inventions Abroad: Frequently Asked Questions About the Patent Cooperation Treaty (PCT)
- Strategic Considerations for International Patent Filings: Exploring the PCT vs. Direct Filing Routes
- Key Differences between PCT Applications and Direct National Filings
