Tag Archives: PCT application

Procedure after receiving ISR for PCT application from the chosen search authority

Once an Applicant of a PCT application receives an International Search Report (ISR) issued by the International Search Authority (ISA), the Applicant has the following options:

Option 1 – Do not respond to the International Bureau

The Applicant can choose not to respond to the International Bureau (IB), and thereafter decide on filing one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

In our opinion, this option may be chosen when the ISR is “positive”, indicating a good probability of patent grant.

Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant does not wish to file national phase patent applications.

Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant wishes to pursue the matter further with national office(s) where national phase patent application(s) will be filed by the Applicant. In this case, the expenses involved in prosecuting national phase application(s) might increase.

Option 2 – Amend the patent specification (claims)

The Applicant can choose to amend the patent specification (claims) based on the observation presented in the ISA. Thereafter, Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The Applicant can have the amended specification considered for examination at the offices where national phase applications will be filed. The amendment may reduce the effort involved in prosecuting national phase applications.

The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.

Option 3 – Submit an “informal response”, without amending the patent specification

The Applicant can choose to submit an “informal response”, without amending the patent specification, based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The informal response may reduce the effort involved in prosecuting national phase applications.

The informal response shall be submitted to the IB within 30 months from the priority date, but preferably before expiry of 28 months from the priority date.

Option 4 – Amend the patent specification (claims) and submit an “informal response”

The Applicant can choose to amend the patent specification (claims) and submit an “informal response” based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The Applicant can have the amended specification considered for examination at the offices where national phase applications are filed. The amendment and the informal response may reduce the effort involved in prosecuting national phase applications.

The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.

The informal response shall be submitted to the IB within 30 months from the earliest priority date, but preferably before expiry of 28 months from the priority date.

Option 5 – Demand for International Preliminary Examination (Chapter II)

The Applicant can demand for International Preliminary Examination (IPE). Note that, statutory fee is associated with this demand. The fee will depend on the International Preliminary Examination Authority (IPEA) chosen by the Applicant.

An Applicant may choose this option if the ISR was “negative”, and the Applicant chooses to submit a response and/or amend the patent specification to pursue the IPEA to provide a “positive” International Preliminary Examination Report (IPER).

Note that, the opinion of the IPEA may not be binding on other national offices, if and when the Applicant files one or more national phase applications.

The proceedings during IPE may reduce the effort involved in prosecuting national phase applications.

The deadline for filing the demand is 3 months from the date of transmittal of the ISR or 22 months from the priority date, whichever expires later.

Option 6 – File national phase applications in Luxembourg, United Republic of Tanzania and Uganda

If option 5 is not chosen, and if patent protection is desired in Luxembourg, then a national phase application can be filed within 20 months from priority date of the PCT application. Alternatively, patent protection in Luxembourg can be sought by filing a national phase patent application in the European Patent Office within 31 months from priority date of the PCT application.

Similarly, if option 5 is not chosen, and if patent protection is desired in United Republic of Tanzania and Uganda, then national phase applications can be filed in the respective nations within 20 months from priority date of the PCT application. Alternatively, patent protection in United Republic of Tanzania and Uganda can be sought by filing a national phase patent application in the African Regional Intellectual Property Organization within 31 months from priority date of the PCT application.

InvnTree IP Services

InvnTree provides up to 30 minutes of free telephonic consultation to enable Applicants understand ISR and take a decision on the way forward.

We hope you found this article useful. Feel free to write to us at contact@invntree.com

Best regards – Team InvnTree

What are the different patent filing options?

In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading the article “How much does it cost to get a patent in India”)

Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our article on this here.

I will attempt to explian the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications:
  1. Filing a provisional patent application

  2. Filing a complete patent application in your country

  3. Filing a patent application in a foreign country

  4. Filing a Patent Cooperation Treaty (PCT) application

patent filing options flowchart InvnTree(2)

1. Filing a provisional patent application

A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.

Normally, inventors/companies file a provisional application in two scenario. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid  to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.

 
The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.
 
It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.
 
A provisional application can be filed in  the patent office of your country or in a patent office of any convention countries (list of contracting countries – Paris conventional).
 
2.Filing a complete patent application in your country

A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date.

A complete patent application in your country can be filed by using any one of the following options:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.

  3. Use the PCT route – Explained under option 4

3.Filing a patent application in a foreign country
 
If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.

  3. Use the PCT route – Explained in detail below

4.Filing a Patent Cooperation Treaty (PCT) application
 
Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.
 
A PCT application can be under the following scenarious:
  1. File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.

  2. File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

  3. File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors.

You may be interested in reading our other related articles listed below:

I hope you found this article helpful.
 
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
 
Best regards – Team InvnTree