Using the PCT System
Although there is no such thing as worldwide patent protection, it is possible to file an International Patent Application under the Patent Cooperation Treaty (PCT).
The International Patent Application is filed centrally at the World Intellectual Property Office (WIPO). An international search is carried out and, optionally, an international examination in the International Phase of the application process.
The international search, and optionally examination, is carried out by an approved national or regional patent office, such as the European Patent Office, US Patent Office or Japanese Patent Office.
The National or Regional Phase of the application process begins, typically, 30 or 31 months after the priority date of the application. This is when the international application splits into national or regional applications in the countries in which patent protection is desired. Further examination and grant of the patent applications then continues in each country/region separately.
Click here for a flow chart setting out the procedure in the International Phase.
Entry into the UK national phase
Entry into the UK national phase can take place up to 31 months after the priority date of the application. Entry into the UK is completed by paying the national fee and filing an English translation of the PCT application where it was neither filed nor published in English.
A request for a search must be filed within two months of the entry into the National Phase; however it is advisable to file the search request on entry.
A request for substantive examination must be filed 33 months after the priority date, or if later, two months from National Phase entry.
The application procedure then continues as outlined under Applying for a UK Patent.
Entry into the European Regional Phase
Entry into the European Regional Phase can take place up to 31 months after the priority date of the application.
Entry into Europe is completed by
- Filing Form 1200, which includes a request for examination, and a search request if the International search authority for the PCT application was not the EPO
- Paying the Filing Fee, Designation Fee, Examination Fee, and Search Fee if applicable
- Filing a translation of the international application in English, French or German if the PCT application was not already in one of these languages
- Paying the third year renewal fee (due on the second anniversary of the filing date), if required
Once the application has entered the European Regional Phase, the applicant is provided with an opportunity to amend the claims, within a period of six months. If the International search was carried out by the EPO then it is also necessary, within this six month period, to address any objections raised in the Written Opinion accompanying the International Search Report. If the International search was not carried out by the EPO then any claim amendments made at this time are voluntary. It is generally recommended to use this six month period to reduce the number of claims to 15 or fewer, so as to avoid payment of excess claims fees.
If the EPO carried out the International search then the next communication to issue will be an examination report. If the EPO did not carry out the International search then the next communication to issue will be the Supplementary European Search Report, followed by a communication asking whether the applicant wishes to continue further with the application.
The application procedure then continues substantially as outlined under Applying for a European Patent.