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 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 [email protected]
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.
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Filing a provisional patent application
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Filing a complete patent application in your country
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Filing a patent application in a foreign country
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Filing a Patent Cooperation Treaty (PCT) 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.
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.
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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.
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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.
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Use the PCT route – Explained under option 4
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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.
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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.
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Use the PCT route – Explained in detail below
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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.
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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.
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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.
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