International patent application
In addition to applying for a patent in the EU state, you should consider seeking patent protection in other countries. By filing an international application or applications in selected countries, you can expand the potential market for your invention.
An international application via the Patent Cooperation Treaty (PCT => Patent Cooperative Treaty; available for multi-country filing) can preserve your options to pursue patents in over 150 countries around the world. If filed within 1 year of your first filed priority patent and/or utility model application, you can have up to 31 months from your priority filing date to apply for patents and/or utility models in these countries.
International patent applications may be filed directly at the World Intellectual Property Organisation in Geneva or through Czech Industrial Property Office.
International application under PCT
Applications for the protection of inventions in any of the Contracting States may be filed as international applications under PCT Treaty.
The international application shall:
- – be in a prescribed language;
- – comply with the prescribed physical requirements;
- – comply with the prescribed requirement of unity of invention;
- – be subject to the payment of the prescribed fees.
Any resident or national of a Contracting State may file an international application. The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.
The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State.
The Treaty regulates in detail the formal requirements with which any international application must comply.
The filing of a PCT application automatically has the effect of the designation of all PCT contracting States. The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State.
The international application is subjected to what is called an “international search.” That search is carried out by one of the major patent offices and results in an “international search report,” that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued. The international search report and the written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw his application, in particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application.
If the applicant decides to continue with the international application with a view to obtaining national (or regional) patents, he can, in relation to most contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated Office by furnishing a translation (where necessary) of the application into the official language of that Office, paying to it the necessary fees and acquiring the services of local patent agents.
If the applicant wishes to make amendments to the application, for example, in order to overcome documents identified in the search report and conclusions made in the written opinion, and to have the potential patentability of the “as-amended” application reviewed, the optional international preliminary examination may be used. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the major patent offices and which contains, once again, a preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate his chances of obtaining patents, and, if the report is favorable, a stronger basis on which to continue with his application before the national and regional patent Offices.
International publication
The International Bureau shall publish international applications. The international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application. The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit of 18 months from the priority date of that application.
Effects of the International Publication
As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.
The request for PCT
The request shall contain:
- -a petition to the effect that the international application be processed according to International Treaty;
- -the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”);
if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate;
if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty;
if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;
- -the name of and other prescribed data concerning the applicant and the agent (if any);
- -the title of the invention;
- -the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application.
Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.
The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
Drawings shall be required when they are necessary for the understanding of the invention. Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
- – the applicant may include such drawings in the international application when filed,
- – any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.
