International patent application
An international patent application , sometimes also called "WO application" or "PCT application", is a patent application under the provisions of the Patent Cooperation Treaty ("PCT" for short). The alternative, synonymous designation "WO application" comes from the country prefix of the publication number of PCT applications, since these publication numbers have the format "WO yyyy / ...", where "WO" stands for "world".
Legal basis
The legal basis in the narrower sense for an international patent application is the patent cooperation agreement administered by the "World Intellectual Property Organization" . However, since a PCT application is also essentially based on the fact that it is processed by certain national or regional patent offices on behalf of WIPO and that it causes entry into other national or regional patent systems, the interfaces for PCT applications created there are in any case as Legal basis in the broader sense. In federal German law, this concerns Article III of the Law on International Patent Conventions (IntPatÜG). In the European Patent Convention , these are Articles 150 to 153 and Rules 157 to 165.
Demarcation
- A patent application is not yet a patent . A patent can only be granted if a patent application meets the formal and content requirements for patentability. The effects of a patent application against third parties are different and usually significantly weaker than those of a patent. In particular, an omission can only be requested from a patent, not from a patent application. A PCT application alone can never lead directly to a patent.
- In terms of substantive law, a PCT application is equivalent, by virtue of the provisions of the PCT Treaty, to all the patent applications of the countries or regions for which the PCT application was selected as valid when it was filed. Due to procedural regulations, direct national or regional patent applications, such as a German patent application or a European patent application , are something different from a PCT application. The PCT itself and national or regional regulations have set formal and fiscal provisions, such as translation requirements or fee payments, before a PCT application is processed as a national application. Articles 23 and 40 of the PCT prohibit the patent offices of the countries selected as affected from processing the PCT application as a national application before the expiry of certain time limits, in most countries 30 or 31 months after the seniority of the PCT application, unless the applicant would request earlier processing.
properties
- An international patent application is a joint, bundled application process that the applicant can pursue for a number of member states of the PCT of his choice and from which the applicant can initiate national or regional patent applications for a limited period in a selectable number of countries or regions then have to continue operating individually. Unlike other patent applications, a PCT application can never lead directly to a patent. The mentioned time limit for initiating national or regional proceedings is now 30 or 31 months after the seniority of the PCT application in most of the contracting states of the PCT. This deadline is set by the respective national regulations. The PCT limits them to at least 30 months.
- Selectable countries : The applicant for the PCT application can choose the member states and member organizations of the PCT as covered by the PCT application. Member states are practically all of the world's major industrial nations. Taiwan is an exception. The European Patent Organization is also a member of the PCT, so that an EP application can also be initiated via a PCT application. France cannot be registered directly via a PCT application, but only indirectly via an application resulting from a PCT application.
- The search request must be for a PCT application with the same filing the PCT application are provided. The applicant receives a search result , the so-called "International search report" or "International search report" ("ISR").
- The request for examination for the so-called "international preliminary examination" can be submitted for a PCT application immediately upon registration or a certain time afterwards. But it does not have to be asked. In response to the request for examination, the applicant receives a reasoned opinion from the responsible examiner and can respond to it with arguments or by changing his application. However, at the end of the preliminary examination procedure, the patent cannot be granted. The result of the international preliminary examination, the so-called "International preliminary examination report" or "International preliminary examination report" ("IPER") can be understood as an expert opinion. Following the “expert opinion”, the competent national or regional patent offices can possibly carry out their work more efficiently and / or faster and / or cheaper.
- The right of priority also applies to PCT applications. You can take and give priorities.
- Responsible office : WIPO is formally responsible for a PCT application . However, the concrete work is carried out by offices commissioned by WIPO. In theory, the applicant has the option of making a choice, which in practice amounts to a local patent office.
- Language: The PCT application is filed and managed in a single language which can be selected by the applicant and which depends on the receiving office chosen by the applicant, e.g. B. German at the European Patent Office. It thus develops the effect of a national registration for those selected countries that have another official language (e.g. Japanese).
- An international patent application is an intangible good and as such an asset. It has one or more owners, usually called the “applicant”, and it can be transferred to one or more other applicants.
costs
Official costs must be paid for an international patent application. If a representative is hired, such as a patent attorney , his costs must also be paid.
The official costs when the PCT application is filed with the European Patent Office include the filing fee, the transmission fee and the search fee. There are also volume-based fees. Together, these can amount to around € 3,000 (as of early 2019). If the international preliminary examination is also requested, the examination fee must be paid. It amounts to approx. 1635 € (as of the beginning of 2019).
The costs of the possibly commissioned representative depend on the agreements between the client and the representative.
Empirical statements
- A time pattern that is often chosen for international patent applications is that they are filed using the priority of a national first application (e.g. a German patent application), that only the search is requested, not the international preliminary examination, and that 30 or 31 months after the Priority of the PCT application referring to it, some national or regional patent applications may be completed, e.g. B. one each for USA, Japan, China and Europe.
- The theoretically possible effect of an international preliminary examination as a unifying and efficiency-increasing expert opinion for the subsequently competent national or regional patent offices does not always occur. There is no legal obligation that compels subsequent patent offices to adopt the results of any international preliminary examination that may have been carried out beforehand. Rather, it is usually at the discretion of the examiners of the subsequent national or regional patent applications derived from the PCT application whether they examine them substantively or whether they want to accept the results of the international preliminary examination. And in some cases there is already a requirement by law that some subsequent patent systems carry out their own measures that complement the PCT results. For example, the European Patent Convention requires a separate European search if the search for the PCT application was not carried out in certain patent offices. Therefore, the international preliminary examination is often not requested for PCT applications.
- Although the PCT application costs a few thousand euros, it is also used to delay incurring even higher costs. The PCT application is a single application in a single language that can be handled by a single lawyer. Translations are not necessary during this time. Instead of many procedures in many languages with many lawyers, it allows joint further processing of an invention for a limited time with a single application. During this time, the applicant may also gain further insights into the technical and / or patent legal value of his application. They can also lead to the registration being dropped altogether, so that relatively little money has been spent until then.
