Tag: priority right

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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.

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Czech national patent prosecution

Full examination of patent application

The Office shall carry out a full examination of the invention application to ensure that it meets the conditions for granting a patent laid down by regulations. The full examination of an invention application shall be carried out by the Office at the request of the applicant or of another person or may be carried out ex officio.

The request for full examination shall be filed within 36 months as from the filing date of the invention application and may not be withdrawn. The person filing the request shall be required, on submitting the request, to pay an administrative fee in accordance with the relevant statutory provisions.The Office shall carry out the full examination immediately after the request has been filed. Where no request for full examination of an invention application has been duly filed or where the Office has not carried out an ex officio examination, the Office shall terminate the procedure concerning the application.

If the conditions for granting a patent have not been met, the Office shall reject the invention application. The applicant shall be given the possibility of submitting observations on the documents on the basis of which the decision on the application is to be taken before rejection. If the applicant does not remedy a defect constituting a bar to the granting of a patent within the given time limit, the Office shall terminate the procedure concerning the application. The attention of the applicant shall be drawn to such consequence of failure to comply when the time limit is stipulated.

If the subject-matter of the invention application satisfies the stipulated conditions and if the applicant has paid the fee laid down in the relevant statutory provisions, the Office shall grant a patent to the applicant who shall thereupon become the proprietor of the patent. The Office shall issue to the proprietor of the patent letters patent in which the name of the inventor shall be mentioned, the description of the invention and the claims shall form an integral part of the letters patent, a notice of the grant of the patent shall be published in the Official Bulletin. If more than one invention application relating to the same subject-matter is filed, only one patent can be granted.

If the full examination of the application for an invention was initiated at the request of a person other than the applicant, or if it was initiated ex officio, the Office shall inform the applicant of this fact. If several persons independently of each other request a full examination of the application for an invention the Office shall initiate the full examination on the basis of the request which arrived first. The Office shall inform persons who filed such requests later of this fact.


Excluded Applications for an Invention

If the Office ascertains that the application for an invention does not comply with the requirements of the Law, it shall invite the applicant to remedy this defect within a set time

limit. Excluded applications for an invention possess the priority right of the original application if the applicant files them within 3 months after remedying the defect from the original application. The applicant may also divide the application for an invention up to the date of grant of patent, in his own initiative. If the application is excluded or divided after initiation of the full examination in accordance with the Law, the excluded application shall be deemed to be an application for which a request was filed for full examination. In the case of an excluded application, the applicant shall be obliged to pay administrative fees corresponding to the state of procedure on the original application at the time of its exclusion.

Patent application

The patent granting procedure shall begin with the filing with the Office of an invention application.

An application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. Where a group of inventions is claimed in one and the same patent application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression „special technical features“ shall mean those features, which define a contribution, which each of the claimed inventions considered as a whole makes the prior art.

The invention must be disclosed in the invention application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the invention concerns an industrial microorganism for the purposes of production, the microorganism must be kept in a public collection as from the date on which the applicant’s priority right begins.

Where there is a doubt, the Office may invite the applicant to provide evidence of the applicability of the invention by producing the subject-matter of the application or in some other appropriate manner. If the applicant is unable to furnish such evidence, the subject-matter of the application shall be deemed not to have applicability.

The priority right of the applicant shall begin with the filing of the application.

The priority right under the Paris Convention must already be claimed by the applicant in his application if invited to do so by the Office, the applicant must furnish evidence of his right within the stipulated time limit, otherwise the priority right shall not be taken into consideration.

The priority right can be claimed, if the invention application has been filed in the state or for the state, which is party to the Paris Convention or a member of the World Trade Organization. If the state, where the first filing of the invention application is made, is neither a party of the Paris Convention, nor a member of the World Trade Organisation, the priority right can only be granted under condition of the reciprocity.

Preliminary examination of the invention application

All the invention applications shall be subject to a preliminary examination carried out by the Office in order to find whether the application contains no element that is obviously contrary to the provisions.

The Office shall reject the invention application if it contains an element contrary to the provisions. The applicant shall be given an opportunity to make observations on the documents on the basis of which the decision has been taken, prior to rejection. If an invention application contains an element that constitutes a bar to its publication or if the applicant has not paid the corresponding administrative fee, the Office shall invite the applicant to submit his observations and to remedy any deficiencies within the set up time limit. If the applicant does not remedy the deficiencies in the invention application constituting a bar to its publication or does not pay the corresponding administrative fee within the stipulated time limit, the Office shall terminate the procedure. The attention of the applicant shall be drawn to such consequence.

The Office shall publish an invention application on expiry of a period of 18 months as from the date on which the priority right begins and shall announce the publication in the Official Bulletin.

An invention application may be published before expiry of the time limit laid down in national regulations at the request submitted by the applicant within 12 months from the date on which the priority right begins and on payment of the administrative fee laid down in the relevant regulations. The Office shall publish an invention application before expiry of the period 1 if a patent has already been granted for the invention. However, if the proprietor of the patent does not give his consent, the Office shall not publish the application before expiry of 12 months as from the date on which the priority right begins.

Together with the invention application, the Office may publish a report on the state of the art (search report) relating to an invention claimed in the application.


Observation of the third party

Following publication of an invention application, any person may submit observations on the patentability of the subject-matter; the Office shall take such observations into consideration when carrying out the full examination of the application. Persons who have submitted observations shall not become party to the procedure with respect to the application. However, the applicant shall be informed of any observations submitted.

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Overview on Patent Prosecution

Czech, European and International Patent Prosecution

Preparation and prosecution of patent applications, both in the EU, Czech Republic and abroad, is the basis for the firm’s practice at its founding, and has been significant in its client services ever since.

We act for clients before the Czech and European Patent Offices in all matters relating to patents. We manage and prosecute international patent programmes both by direct national and European applications and by international applications via the Patent Cooperation Treaty PCT. We advise on the most cost effective and appropriate filing strategy in each case.

Please choose from the list below to continue reading.

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The priority right

The priority right of the applicant shall begin with the filing of the application.

The applicant shall claim the right of priority under the Paris Convention for the Protection of Industrial Property (hereinafter “Paris Convention”) already on filing the application and, at the same time, state the filing date of the application from which the right of priority derives, its number and the state in which the application has been filed or the authority with which the application has been filed under the international treaty. At the request of the Office, the applicant must furnish evidence of this right within the stated time limit, failing which the priority right shall not be taken into consideration.

In case of the conversion of the European patent application, in which the protection for the Czech Republic was requested, into the application, the applicant may claim his right of priority from the European patent application.

If the applicant has already sought in the Czech Republic a patent for the same technical solution, he shall be entitled to request in his application the recognition of the filing date of such application or any right of priority deriving therefrom. The Office shall afford the application for utility model protection the date of filing or of priority of the earlier patent application if the later application is filed within two months of the decision on the patent application and, at the latest however, within 10 years of its filing date. An applicant claiming rights shall be required – within a period of two months from filing the application for utility model protection – to submit a duplicate of the patent application the filing or priority date of which is claimed, failing which the right shall lapse.