Is there a “Worldwide Patent”?

The expression “worldwide patent” has no meaning in itself. At present, there is no legal procedure that allows granting of a patent, which is valid worldwide. The abbreviation “PCT” comes from the Patent Cooperation Treaty. The application filed under this Treaty is often wrongly referred to as an application for “global patent” or “international patent”. PCT application is an International application for patent. The final result of its filing is an International publication and not a “worldwide patent”.

The International publication is extremely important for anyone who is seeking patent protection in different countries around the world. The Patent Cooperation Treaty is intended to benefit applicants when seeking protection of their inventions abroad. It also assists National Patent Offices in taking decisions on patent applications. It also provides public access to substantial technical information, related to these inventions. By filing a single international application according to PCT, applicants may seek the protection of an invention in 152 countries.

What is a PCT application?

The PCT application does not provide the possibility of obtaining an international patent. It is an opportunity to seek patent protection for an invention simultaneously in a large number of countries. Such an application may be filed by anyone who is national or resident of a Contracting State to the PCT.

It is usually advisable to file the application with the national patent office of the Contracting State of which the applicant is a national or resident, or at the choice of the applicant at the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. And although a patent application is filed for a large number of countries, the result of the procedure is not a worldwide patent. The grant of patents remains the responsibility of national or regional patent offices in the so-called “national phase”. The final result of the procedure before the International Bureau is an international publication of the application. The PCT application has the structure and content of any other patent application… (see more about Patent for invention).

Phases in the PCT procedure

1. Filing and dating an application

The filing of an international application is carried out in one language and one set of fees is paid. Before filing an international application, the applicant may file an application for patent in Bulgaria. That ensures the opportunity to file an international application within a 12-months term. These 12 months determine the period for using the priority. The international application may claim a priority from the Bulgarian application. In this way, the applicant receives an additional 12 months. With them, he can extend the procedure for submitting the international application. The International Bureau does not grant a worldwide patent. It shall undertake only the formal check (examination) of the application.

2. International Search

An international search is in fact a search in patent databases. It provides an analysis of the patentability of the invention. The search is conducted by the “International Search Authority” (ISA) (one of the world’s largest patent authorities). The International Search Authority identifies published patent documents and technical literature in the field of the invention (“prior art search“) that are relevant to the patentability of the invention and prepares a written opinion regarding the potential for patenting the invention. The International Search Authority does not take a decision on the application. 

A patent may not be refused or granted in the proceedings. The report of the International Search Authority is for information purposes only. It provides a preliminary assessment of the state of the invention. It is important that the description and claims of the application be prepared in accordance with the general drafting requirements. The International Search Authority may carry out a partial search or no search at all due to ambiguities and inaccuracies. Fees for incomplete reports or refusal to conduct a search are not refundable. For applicants from Bulgaria, there are 2 options for an International Search Authority – the European Patent Office (EPO) or the Federal Intellectual Property Office of Russia (ROSPATENT).

3. International Publication

International publication shall take place as soon as possible after the expiration of 18 months from the earliest date of filing of the application. The content of the international application is disclosed to the world through publication. The search report of the International Search Authority (in case the search has been conducted), shall be published together with the application. It should be clarified that in some cases the International Search Authority may refuse to conduct a search. This happens when the invention is misunderstandable or unclear and the subject matter of the application can not be derived from the claims and/or description of the application.

4. Additional International Search

Additional International Search is not mandatory and remains an option for the applicant. It shall be carried out by a second International Search Authority at the applicant’s request. This search may identify published documents that may not have been found by the first International Search Authority which conducted the main search due to the variety of state of art in different languages and different technical fields.  Extra fees are subject to payment for additional international searches. However, some of the documents are often omitted due to the limited number of examiners using the language of a country (eg. Bulgarian language).

5. International Preliminary Examination Search

An international preliminary check (examination) is also an option provided by the International Bureau at the applicant’s request. Any of the International Search Authorities may conduct further analysis of patentability, usually on an amended version of the claims and description. This search is also subject to payment of additional fees.

6. National phase

The national phase is the period after the completion of the PCT procedure and usually lasts from the date of the international publication to 30 – 31 months from the date of filing of the international application or from the filing date of the application from which the priority is claimed (when is claimed). By the deadline, patent applications for the invention must be filed directly with the national (or regional) patent offices of the countries in which protection is sought.

In most cases, you have up to 30-31 months to complete the procedures for entering the national phase in the national patent offices, which means filing applications for the opening of the national phase in the countries of interest, as the procedure does not end with a “global patent”, nor with “an international patent”.

We at BV&Кo are ready to prepare any International patent application, including drafting of patent claims and descriptions. Todor Komilev, who is one of the founders of BV & Кo, has many years of experience as an expert on the Patent Cooperation Treaty. One of his main duties as a former examiner of the Patent Office was to process incoming international patent applications and to advise applicants who would like to file a PCT application. The representation by Todor Komilev before the International Bureau, as well as his knowledge of the entire PCT procedure, can save BV & Ko clients valuable time and financial resources.