International patent application Home > Patent and trademark attorneys > Patents > International patent application How the international patent application works The international patent application is truly an effective instrument for those who aim to broad their business worldwide but they have not clearly selected their states of interest yet. In fact, the international patent allows one to file a single application effective in all states bound by the Patent Cooperation Treaty (PCT) – many states are included in the list. Once the application has been filed, a unitary international search is carried out to assess the novelty of it. Then, the entrepreneur has 30 months calculated from the filing date to decide the states where to file the national phases. Practically, an application is valid for two years in almost the whole world with limited costs. This allows one to test the product and have the necessary time to make strategic decisions depending on factors linked to production and commercial development. Rely on Turini Group to protect your Patent Discover our online services to file a patent claiming priority. Answer the questions to receive a quotation. Make the payment, upload the required documents, and monitor the status of your order in your reserved area! Claim priority for your patent online Why resort to a registered patent attorney to file an international patent application? The international patent application can be filed as a first filing and in this case, it grants the purported priority right, that is the possibility to extend the application to other states within 12 months, reconnecting to the filing date of the international patent application. The procedure is possible but it requires caution if the applicant is Italian. The procedure to obtain an international patent application is quite complex and it is always supervised by a registered patent attorney who knows the procedure well and can suggest the best solutions to have the patent granted. We examine the main points of the international procedure. What is the international patent? How to file an international patent application The international procedure Keeping the international patent application in force Duration and prosecution Reference regulation Request a consultation What is the international patent? The international patent, known as PCT from the name of the treaty that has instituted it (Patent Cooperation Treaty) is actually a procedure with which the patent can be basically “booked” all over the world – starting from a single application. The international patent application has effect in all the member states of the PCT – almost all the states of the world. In this case, the patent application is filed with a single application but it acts as a set of national patents, preventing from producing, selling, importing to the territory of the selected states, that can be all or even only a part of PCT member states. Since these are very different states, it becomes essential here to take into consideration the individual national laws. The patent application can be filed immediately or within 12 months from the filing of a previous identical national or regional patent, which can be an Italian patent application (purported priority). Before filing a patent, the invention must be examined thoroughly and one must choose how to file it. Once the preliminary analysis has been carried out carefully and with the help of a registered patent consultant, then the patent application can be filed. How to file an international patent application The international patent application can be filed with the WIPO, with the EPO or with the Italian Patent and Trademark Office, which will forward it to the international office. Only residents or those who have the nationality in one of the contracting states of the PCT convention have the right to file a PCT international patent application. In order to file the PCT application, it is necessary to fill in a series of forms in which the information on the applicant, who will become the patent holder, the title of the patent, the inventor’s name and a series of other information must be indicated. The states where the application will be valid must be selected in the international application – even if normally all states are indicated since their number does not affect filing costs. The official languages of the PCT patent depend on the Receiving Office (R.O.) where one is authorized to file, on the International Search Authority (I.S.A.) that can be selected and on the provided languages of publication. For example, the WIPO (World Intellectual Property Organization), if selected as the Receiving Office, accepts any language, whereas the EPO (selected both as R.O. and as I.S.A.) accepts applications in English, French and German. The Italian Office (R.O.) accepts English, French, German and Italian. According to the case, a subsequent translation of the text could be requested so that the application can be accepted and searched by the selected I.S.A and subsequently published (language of publication). This language will also be the language of the entire procedure. The description, the claims and the technical drawings must be attached to the forms. First of all, the description must highlight the technical problem that the invention aims to solve and the advantages that derive from the use of the invention. All the main technical-constructive features of the proposed solution must be described, with the help of the attached drawings. The functioning or the procedure through which a certain result is obtained will be described depending on the type of invention. The most important part of the patent are the “claims” that must reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not an object of protection. The claims are intended to be formulated in a “waterfall-like” way in the sense that the first one is the most important one, which encloses the core of the invention, while the subsequent ones are a sort of specification of the first one. The technical drawings will also have to be prepared so as to show well which is the inventive solution to be protected. Therefore, it is inadvisable to attach too many detailed constructive drawings with sizes and irrelevant particulars. In order to proceed with the filing, administrative fees and official fees, which vary depending on the text length and the number of claims, must be paid. Preparing the patent application well is as fundamental as analyzing the invention well before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of counterfeiting is greater or less. The international procedure Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file initiates. Unlike what happens with the European patent, in the PCT procedure no grant is obtained of an international patent since the unitary procedure is interrupted before the examination of the application. Once the application has been received, the international Office proceeds with the novelty search and provides a preliminary opinion of grant. If the patent holder deems it appropriate, s/he can further request an international preliminary examination, which consists of the possibility of arguing with the international examiner, in the event that the preliminary opinion was negative, in order to try converting it into a positive opinion. The international search and the preliminary opinion of the international examiner, even if they are optimal indications of the real possibilities of grant of the patent, are not binding opinions on the final outcome. Once this phase has been completed, that is almost in the totality of cases after 30 or 31 months from the priority date, the international phase ends and the national or regional phases must be started by requesting that each state examines the patent and grants it. From this moment on the patent will split into many national patents and each one will follow its own path and procedure. The advantage of the PCT is in being able to file a patent application substantially all over the world at reduced costs that will undergo a single search and, apart from rare exceptions, with the further advantage of being able to have 30 months of time to understand in which states the patent deserves to be obtained. Thanks to this procedure, with a quite moderate expense considering the width of the extension, one’s invention can be protected and commercial negotiations or sales can be safely initiated all over the world, postponing the final choice of the states to a subsequent moment. The applicant who has filed a PCT is not obliged to proceed with the national phases in all the states indicated initially but can choose to do so only in some countries of interest, thereby reducing the costs. The national phase consists of the filing in the selected state of the international application, often translated into the local language, of the payment of the fees provided by the state and of a series of fulfilments that vary from country to country. The assistance by an expert that is acquainted with the local regulations is essential in this phase. Now an entry into the Italian national phase can be filed without necessarily filing a European regional phase. This enables one to obtain protection in Italy directly in the event that the applicant does not want to file a European regional phase. Keeping the international patent application in force During the international phase, once the fees have been regularly paid for the filing and the search, no other fees must be paid to the WIPO and annual fees do not have to be paid either. Annual maintenance fees will instead be paid from the moment of the entry into the national phases and will have to be paid state by state in each selected country. Duration and protection Even if many months are necessary before the international patent application is granted as a national patent in one or more of the indicated states, in this period the invention can be implemented and also sold or licensed in some states. Moreover, in some states action can be taken against an infringer also on the basis of only the public patent application, with the assistance of an attorney expert in the field to avoid mistakes that could compromise its success. The national patent obtained after a PCT filing is valid for 20 years from the filing date of the international application. Reference regulations The Patent Cooperation Treaty (PCT) of 1970 and subsequent amendments. Get in touch with our expert Ing. Mario Emmi Head of Patent Department contact us
