What is a PCT International Application?
Whether or not a patent is granted for an invention in a certain country is determined independently on the basis of the patent law of that country. Therefore, when a business on the basis of an invention is expanded overseas, it is important to take such measures as protecting the invention by obtaining a patent in that country to eliminate the fear of any counterfeit. The decision of granting a patent is independently made by that country under the patent law of that country, and its effect is limited to within the territory of the country where the patent right has been obtained (territorial principle). Accordingly, in order to obtain a patent in a certain country, the fundamental rule is to directly file a patent application in that country.
Moreover, it is important to file an application for the invention as quickly as possible (first-to-file system). However, it is very troublesome to file separate patent applications in all countries where you wish to obtain patents.
The PCT International Application Filing System is an international patent application filing system that can be used for relieving the complicated and inefficient procedures of directly filing an application in various countries of various forms and languages. By filing one set of application documents of an internationally unified form with the patent office of your own country as the PCT International application, provided that your own country is a PCT member state (146 PCT member states as of October 2012), the same effect can be achieved as filing applications in all of the PCT member states.
Namely, the PCT International Application Filing System is a system in which (1) one set of application documents is (2) prepared in the Applicant’s native language (the Japan Patent Office (JPO) as a receiving office accepts not only Japanese-language application documents but also English-language application documents), and (3) this set is filed with the patent office of their country, so that (4) with respect to all the PCT member states effective at that point in time, (5) an effect same as filing a domestic application therewith at the same date of the PCT International application filing date is brought about.
It should be noted that the filing of the PCT international application is merely a filing procedure, and the final decision of patentability is at the discretion of the patent office of that country
Advantageous points in utilizing PCT International Application Publication
(1) A “filing date” can be secured for all member states by one application
The filing date (international application filing date) for the PCT international application will serve as the filing date for all PCT member states.
(2) Procedures are easy and efficient
Filing a PCT international application has the same effect as filing domestic applications in all of the PCT member states. Furthermore, most of the procedures during the international phase can be made with the receiving office, which is the patent office of your home country. Hence, the procedures are easier and more efficient than directly filing an application in each of the countries in their respective languages.
(3) There is no need to decide which country to seek a patent in at the time of filing the application
PCT international applications have a period of 30 months (with exemptions) from the priority date until the entry into the national phase. By efficiently utilizing the time longer than the priority period under the Paris Convention (i.e., 12 months), it is possible to ascertain the patentability, market trend, standardization trend etc., thereby allowing for entering into the national phase just for the countries in which the Applicant truly wishes to obtain patents. As a result, it is possible to minimize the costs in entering into the national phase.
(4) Material for determining patentability is obtainable
All PCT International applications are subjected to an “international search” that searches whether or not there is prior art related to that invention. The result of the international search is provided to the Applicant as an International Search Report and an International Search Written Opinion, before the application is internationally published. Moreover, upon request by the Applicant, a preliminary examination (international preliminary examination) can be performed to the application as to the requirements for patenting the invention. These can be effectively utilized as material for evaluating the invention.
(5) It is possible to file an application in a native language (in the case of the JPO, Japanese or English) even immediately before the priority date
It is possible to enjoy the benefits of the priority rights by filing an application in a foreign country within 12 months from filing a domestic application filed in advance, by claiming priority on that domestic application. However, if there are many countries in which you wish to obtain patents, the translations may not be prepared in time for the filing. The PCT international application can be filed in their native language (the JPO as a the receiving office accepts not only Japanese-language application documents but also English-language application documents）, so hence the application can be filed even immediately before the due date for claiming priority.
Patent Prosecution Highway （PCT-PPH）
Utilization of the PCT International Application Filing System allows for utilizing the Patent Prosecution Highway （PPH）.
PPH is a scheme established for facilitating the acquisition of a patent at an early stage worldwide and to reduce the burden of examination and enhance the quality of examination. With applications including inventions which have been determined to be patentable by the Office of First Filing to undergo an accelerated examination in the Office of Second Filing with a simple procedure upon request from an Applicant.
The JPO has commenced the patent prosecution highway (PCT-PPH) program that uses the obtained material in the international phase of the PCT international application, on a pilot basis. Under the PCT-PPH program, when an application complies with certain requirements set forth in the PCT-PPH guidelines, an accelerated examination can be requested by use of a Written Opinion established by certain Internationals Searching Authorities or by use of an international preliminary examination report established by certain International Preliminary Examining Authorities.
PCT-PPH is effective in protecting technology that requires early patenting. For example, it is possible to select to utilize the PCT-PPH when early patenting is aimed at, and for applications that require time for deciding whether or not to enter into the national phase, it is possible to select to use the period of 30 months from the priority date, without making use of the PCT-PPH program.