Overview of PCT System for Invention Protection Abroad

PCT System is a tool which helps protecting Inventions abroad and based on the Patent Cooperation Treaty (PCT). PCT is international treaty with more than 150 Contracting States. This system makes it possible for patent owner to protect theirs invention simultaneously in a large number of country by filing only one international application instead of national or regional submitting, normally through the support of IP attorney.

Vietnam patent

However, the patent is granted under the control of national or regional patent offices via national phase. The application when filing by this system is called PCT application. The general PCT procedures includes: filing application; international search; international publication; supplementary international search (optional); international preliminary examination (optional); national phase.

PCT is widely used by individuals and different organizations. Patent owner is entitled to file PCT application if they are a national or resident of a PCT Contracting States. If there are several applicants named in the international application, only one of them needs to comply with this requirement. Also, the PCT application can be filed, in most case, with national patent offices or directly with WIPO if pursuant to national law.

One of the most important matters which applicant notice is the time schedule when filing PCT application. Normally, applicant will have up to 18 months from the time they file their international patent application (or usually 30 months from the filing date of the initial patent application of which they claim priority) before they enter national phase with the separate procedures of each national patent offices. Be noted that you always can ask for an early entry into the national phase without waiting for the expiration of 30 months.

During the time period of PCT process, the PCT application will be gone through an international search which is the main search beside supplementary international search, by International Searching Authorities which may be either a national office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of documentary search reports on prior art with respect to inventions which are the subject of applications, with the result of an international search report. The report enable applicant to evaluate the chances of obtaining patents in national phase. After that, the application will be published or this step called International publication. WIPO (World Intellectual Property Organization) publishes the international application shortly after the expiration of 18 months from the priority date together with the international search report on PATENTSCOPE. After the international publication, applicant can also request for a second evaluation of the potential patentability of the invention which is International preliminary examination. This examination allows applicant to amend the international application before entering the national phase. At the end of the procedure, an international preliminary report on patentability will be issued. This report give the opinion on the compliance with the international patentability criteria of each of the claims which have been searched and an even stronger basis on which to evaluate the chances of obtaining patents.

Finally, you may decide to push your application go further when proceeding with national phase. From that time, the procedures would comply with the national where it is elected or designated.

For PCT registration in Vietnam, the patent attorney in Vietnam at ANT Lawyer will be of help for advisory, and filing with National Office of Intellectual Property in Vietnam.

Continue Reading

Which is the best country to file patent rights?

With respect to your first filed patent application, you may not have a choice. Some countries have export control laws that require that you first file in your current country. Only after being granted a foreign filing license do you then have the option to file in other countries.

PCT National Phase Entry in Vietnam

According to the Paris Convention, you have within one year of your first filed application to file in foreign countries and claim priority to the filing date of the first filed application. Filing in many countries can be extremely expensive, however. A common strategy is thus to file a single PCT application, which can later be the basis for national/regional stage filings. This delays the expense, and allows more time to decide which countries are best. But one must realized that this strategy only applies to PCT member states. That does not include some countries, for example, Taiwan and Argentina. Applications must be filed there within a year of the first filing.

30 months after the earliest priority date of the PCT application, you’ll need to decide which countries (or regions) to enter the PCT application into. The best choice may be none. For example, if the PCT search report reveals prior art that is fatal to the patent application.

Assuming there are no major show-stoppers in the PCT stage, then there is a complex analysis that needs to take into account various factors, such as 1) your patent budget, 2) the market size in each country, 3) the likelihood of manufacturing in each country, 4) the strength of patent laws in each country, 5) the kinds of technologies patentable in each country. Balancing these against each other and coming up with an set of countries is extremely case specific. There is no generic answer as to what country or countries is best in the abstract. That being said, some of the most common countries/regions are US, Europe, Japan, Canada, Australia, S. Korea, and China. Within Europe, patents are most often validated in UK, France, and Germany

Continue Reading