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PCT application

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WHAT YOU SHOULD KNOW

To save the trouble of filing individual national applications, there are so-called multiple applications. A multiple application is the PCT application (Patent Cooperation Treaty).

The PCT application is a centralized filing system that does not result in the grant of a patent.

Instead, you have to arrange for the initiation of the national phase in the individual designated contracting states, pay national patent application fees and designate any representation by patent attorneys or agents for service.

Tip: The search result of a national patent or utility model application filed first can tell you whether a multiple application is generally worthwhile. 

WHAT IS THE PCT TREATY?

The PCT - the Patent Cooperation Treaty - facilitates a patent application with effect in up to 151 member states (in about 78% of all states on earth, compared to the 193 member states of the United Nations UN).

The competent authority is the World Intellectual Property Organization called WIPO, based in Geneva.

In contrast to the European patent application, which is formally examined, searched and, if allowable, granted by a single duly qualified authority, a PCT application only allows for a uniform, standardized application procedure, but not a central granting procedure, because although all PCT member countries are automatically designated with each PCT application, the selection of those countries where protection is actually to be obtained is only made by entering the so-called national phases in the individual countries.

WHO IS RESPONSIBLE FOR A PCT APPLICATION?

Initially, up to four authorities may be competent for a single PCT application:

  1. The authority where the application is filed, called the Receiving Office (RO).
  2. The parent authority, the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva.
  3. The authority carrying out the search, the International Searching Authority (ISA).
  4. If the occasion arises, the authority conducting the preliminary international examination, the International Preliminary Examination Authority (IPEA).

The authorities of the individual national countries are then responsible for the national phases.  

WHO CAN APPLY - REPRESENTATION?

An international patent may be applied for by all natural persons who are domiciled in a PCT contracting state or who are nationals of a contracting state, and by all legal entities such as companies who have their seat in a contracting state.

All professional representatives of parties who are also admitted before the national patent authority or who are admitted before a national authority of a contracting state are eligible as representatives. If there is more than one applicant, it is sufficient if at least one of the applicants has their residence or place of business in a Contracting State; they may then act as common representative for all the other applicants.

WHERE CAN YOU FILE AN APPLICATION AND IN WHICH LANGUAGE?

Austrian applicants, i.e. natural persons having Austrian citizenship or residence in Austria, or legal entities such as companies having their seat in Austria, may file PCT applications either

  • directly at the International Bureau (IB) of WIPO in Geneva,
  • at the Austrian Patent Office as Receiving Office (RO), or
  • the European Patent Office,

PCT applications for the IB can be filed either electronically via the services ePCT, PCT-Safe or the eOLF client of the European Patent Office (EPO), by fax (only as last resort), provided that an original is subsequently filed by post within 14 days of receipt of the fax application, by post or in person in Geneva. 

Since 1 June 2011, PCT applications can be filed online at the Austrian Patent Office. Since 1 March 2014, PCT applications can also be filed in electronic form via ePCT.

In principle, the IB accepts PCT applications in all languages. However, at least the request must be in one of the 10 languages of publication (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish). Furthermore, the competent Searching Authority ISA or, if applicable, the competent International Preliminary Examining Authority IPEA must either be proficient in the selected language or a corresponding translation must be provided.

The Austrian Patent Office accepts PCT applications in German, English and French only. It is important to note that the language of the application form must be the same as the language of the other documents!

FORMAL REQUIREMENTS

A PCT application consists of at least the following parts:

  1. Request form PCT/RO/101 (in case of online filing in electronic form)
  2. Description of the invention
  3. One or more claims
  4. Drawings, if any
  5. Abstract

In principle, all contracting states are designated with a PCT application.

EXAMINATION / PROCEDURE

Request

The Receiving Office (RO) carries out a formality check immediately after receipt of the application and forwards a copy of the application documents to the IB of WIPO in Geneva and to the competent Searching Authority ISA. For Austrian applicants, the European Patent Office (EPO) is always the competent ISA.

< 1 month

Within a period of one month from the filing date, the transmittal fee, the international filing fee and the search fees must also be paid (additional costs if more than 30 pages).

Search report

The ISA carries out a comprehensive search into the pertinent state of the art. The results are communicated to the applicant in the form of a search report, which is normally expected 16 months from the filing or priority date.

18 months

After 18 months from the priority date, the PCT application is published. If the search report is already available, it is published at the same time; if not, the search report is published separately later. With the publication of the application, the applicant obtains so-called provisional protection, which assures said applicant of a certain "adequate compensation" vis-à-vis third parties.

18-20 months

A maximum of 2 months after receipt of the search report (or 19 months after the priority date, whichever is later), the applicant can file a preliminary examination request and pay the necessary examination fee. In the subsequent (written) dialogue with the competent examining authority IPEA (which may or may not be the same as the searching authority ISA), the applicant may or may not obtain a positive reassessment of his invention against the negative prior art shown in the search report. In both cases, the IPEA issues written opinions (WO) accordingly.

< 30 months

Within 30 months (sometimes 31 months) from the filing or priority date, the applicant must enter the so-called national phase in all those countries where they actually want to obtain protection, usually not only paying the required national fees and complying with the national regulations, but also providing translations and appointing representatives. In all those countries where the applicant misses this deadline, national proceedings are never initiated.

In Austria, the application for entry into the national phase can be filed informally and without a form. However, a German-language translation of the application documents may be attached if the PCT application was not filed in German. After payment of the fees for a national patent application plus a fee for entering the national phase, the PCT application is treated like any national patent application.

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