A PCT application automatically covers many countries, and it is possible to have different applicants for different countries. When any applicant in the PCT application is not also an inventor, we strongly recommend that, at the time of filing the PCT application, the inventor s sign an assignment document.
If you would like further information on assignments, please let us know. In such cases, the patent specification and the associated formal papers are filed in English. It is generally necessary to provide the names, contact addresses and nationalities of the applicants, as well as the names and contact addresses of the inventors. Instead, the PCT application provides automatic coverage for all member states and all types of protection available under the PCT at the time of filing the PCT application.
Although in most cases it is no longer necessary to file additional documents e. Appointment of Agent forms signed by the applicants and inventors, this is still sometimes recommended. Also, it may be necessary to file good quality versions of any drawings.
The ISR may include, for example, documents considered to be relevant for novelty and inventiveness. The WOISA is an initial opinion on the core patentability requirements: novelty, inventiveness and industrial applicability.
It is possible to file amended claims in reply to the ISR. The international patent application will be published on a Thursday shortly after 18 months from the priority date. If possible, the ISR will be included in the publication. If not, it will be published later. Publication can only be prevented by withdrawing the international patent application, no later than about three weeks before the expected publication date. PCT applications are automatically subject to examination.
By default, the examination is performed without interaction between the applicant and the Examiner under Chapter I. However, if a Demand is filed, examination is performed with interaction between the applicant and the Examiner under Chapter II. This is especially true for the European Regional Phase, where further examination essentially continues from where the international examination stopped.
The deadline for filing the Demand is the later of: 22 months from the priority date, and 3 months from the issuance of the WOISA.
The IPRP often gives a good indication of the prospects of actually obtaining granted patents, and their potential scope of protection. The PCT application itself will never become a patent. This must be done by the appropriate deadline. Most of these countries have since withdrawn their reservations. However, if you wish to enter the National Phase in any of these countries rather than the corresponding Regional Phase , then it is necessary to file a Demand by 19 months from the priority date if you wish to delay the National Phase deadline from 20 to 30 months.
Again, it may be necessary to obtain certain formal documents, signed by the applicants and the inventors. For example, for an English language PCT application, it is necessary to prepare and file a Japanese language translation of the entire application within two months of entering the Japanese National Phase.
However, after entering the US National Phase, the US Examiner may pay little heed to what happened during the International Phase, and further examination may well be "from scratch". Advantages of the PCT route, as compared to filing individual foreign patent applications, include:. Disadvantages of the PCT route, as compared to filing individual foreign patent applications, include:.
VAT , plus the cost of preparing a translation into a local official language if necessary. We can provide more precise estimates on a case-by-case basis. T his information is simplified and must not be taken as a definitive statement of the law or practice. Our IP specialists work at all stage of the IP life cycle and provide strategic advice about patent, trade mark and registered designs, as well as any IP-related disputes and legal and commercial requirements.
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