International Patent Registration (PCT)
Registration of a patent in a single country alone does not prevent its unauthorized use by others, which is why an international patent registration system known as the Patent Cooperation Treaty (PCT) was established. In today’s world, where innovation plays a fundamental role in the competitiveness of companies and inventors, international protection of patents has become increasingly important. For the first time in 1970, an agreement was concluded under which inventors can file a single international patent application to seek protection in more than 150 member countries. Reducing the costs of registration in multiple countries and simplifying the international registration process are among the main objectives of this agreement.
What Is PCT Patent Registration?
Having peace of mind about how original ideas and inventions are protected is valuable to many individuals, companies, and businesses. For this reason, intellectual property systems, particularly the PCT patent registration system, have been established to formally and legally register these inventions and establish ownership of innovations. The Patent Cooperation Treaty (PCT) is a multilateral treaty through which individuals can formally seek patent protection for their inventions, research, and innovations in other member countries, helping prevent unauthorized use and the production of similar products by others.
Through international PCT patent registration, it is possible to obtain facilities for securing protection for inventions and achievements in any of the member countries. To do so, it is only necessary to prepare and file a properly drafted application in accordance with all the requirements and procedures of this system. It should be noted that if an inventor wishes to obtain patent protection for their inventions and achievements in all countries, PCT registration alone is not sufficient.
PCT registration refers to an initial step toward obtaining patent protection for inventions and innovative achievements in the 150 member countries of the organization, helping prevent unauthorized copying or registration of similar works by others. Therefore, it is important to understand that PCT patent registration does not mean the issuance of a worldwide patent certificate; rather, it facilitates protection of the inventor at the national and regional levels.
Knowledge-based companies, technology startups, inventors targeting international markets, and companies seeking to attract foreign investors should consider using the Patent Cooperation Treaty (PCT) for their inventions. This is essential for such individuals and businesses and offers several advantages. Overall, the PCT system is a powerful tool for managing international patent registration and helps inventors assess the status of their inventions before incurring significant national filing costs.
Receiving the International Patent Search Report
One of the key benefits of filing a patent through WIPO is receiving an International Search Report. Through this process, the inventor receives an international search report from one of the approved search authorities approximately 4 to 6 months after the priority date. Based on this report, the inventor can determine which similar inventions have previously been registered in other countries and assess the degree of similarity between the inventions. This report can be highly useful for the inventor when entering the national phase and provides valuable insight into the patent’s potential for protection.
Prevention of Similar Patent Registration by Others
When an inventor files an international patent application, a version of the patent documents is published and made available to the designated offices. At this stage, the publication can serve as prior art against later patent applications containing similar claims, which is one of the important advantages of the PCT system. However, PCT publication does not absolutely prevent others from filing similar patent applications; rather, it can be used as prior art during subsequent examinations.
Extending the Priority Period to 12 Months
Under the Paris Convention, the period for claiming priority is 12 months. However, if an inventor files a patent application under the PCT system, they can extend the period for entering the national phase to 30 or 31 months. If the inventor files the patent in a country and then applies for PCT protection, this 30-month period is calculated from the filing date of the application in that country.
Publication of the Invention in the PCT Database
The publication of documents submitted to the PCT after 18 months in the PatentScope information database is another advantage of the international PCT patent registration system. Accordingly, the inventor can refer to this database, and a copy of all documents is also sent to the patent offices selected at the beginning of the filing process.
No Need for Translation During the National Phase
In most countries, entering the national phase requires a complete translation of the documents into the official language of that country (for example, China, Japan, and Germany). In other words, if an inventor wants to register their invention in another country, such as China, all documents must be translated into Chinese. This can be complicated and challenging, as specialized technical terms related to the invention may not be translated accurately, potentially affecting the protection of the invention. After the inventor files an international PCT patent application in English, entering the national phase in other countries does not require translation into the destination country’s language.
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PCT Patent Registration Process
To register their research and inventions with the World Intellectual Property Organization (WIPO), an inventor must properly complete the PCT patent registration process. These steps are not particularly complex or confusing; it is simply necessary to submit all the required documents and supporting materials to the relevant offices.
1. Preparation of the International Application
The inventor must prepare an application that is translated into one of the languages accepted by the World Intellectual Property Organization (WIPO) for patent registration, including Russian, English, German, and French. In fact, the first step toward international patent registration is to properly prepare the required application.
2. Filing the International Application
In the next step, the application and its specifications are submitted through the WIPO website. Based on this, the filing date of the first application in the relevant country is 12 months. After submitting the application, the PCT patent registration fee must then be paid through international accounts.
3. Approval and Submission to an International Searching Authority
If the application and the inventor’s specifications have been properly prepared in accordance with the required standards, they will then be referred to an International Searching Authority selected by the applicant for examination. The authorities available to Iranian inventors include those in India, Russia, China, and Europe. The next step is to pay the preliminary search fee, which ranges from €50 to €5,000 depending on the authority selected by the inventor.
4. International Preliminary Search
At this stage, a selected International Searching Authority reviews the application and the inventor’s specifications and issues an international search report and a written opinion regarding the applicant’s claims.
5. International Publication
Then comes the international publication stage, during which the inventor’s international application, along with the relevant attachments, as well as the international search report and the written opinion of the International Searching Authority, are published on the WIPO website.
6. National Phase of Patent Registration
After filing a PCT application and no later than 30 months from the priority filing date, the inventor has the opportunity to proceed with patent registration in the country of their choice. It should be noted that if the applicant fails to proceed with international PCT patent registration by the specified deadline, they can no longer claim PCT priority. However, registration may still be possible if the public disclosure has not created an obstacle.
Documents Required for PCT Patent Registration
More than 150 countries, including China, Japan, India, the United States, South Korea, Australia, Canada, European countries, and other industrialized nations, are members of the PCT. International PCT patent registration is one of the most important global intellectual property agreements, and obtaining approval requires valid documentation. PCT filing does not mean obtaining a worldwide patent; rather, it is an effective and valuable step toward initiating patent protection in different countries.
Providing the inventor’s documents accurately and correctly can play an important role in increasing the likelihood of application approval and acceptance in the target countries. Some of the most important technical, identification, and structural documents required for WIPO patent registration include:
Complete Details of the Applicant and Inventor:
Complete details include the first and last name, company name, nationality or residential address, and contact information.
Complete Description of the Invention and Claims:
The invention must be fully described in these documents in technical and comprehensible language, along with a description of its innovative features.
Technical Drawings and Samples, if Required:
If the invention contains mechanical and technical components, accurate and numbered drawings and diagrams must be provided.
Complete Details of the Applicant and Inventor:
The inventor must provide a short and clear description of the general nature of the invention and its application for use in the public disclosure.
Translation of Documents, if Required:
If the initial documents are in a language other than the official language of the receiving office, an official translation must be provided.
PCT Patent Registration Cost
The PCT patent registration fee must be paid in stages, and these costs depend on the number of pages in the application, the country of origin, the number of claims, the type of applicant, and the destination countries. The basic filing fee is approximately CHF 1,400, with an additional fee charged for each extra page of the application. After the initial filing, the international search and examination fee must be paid to the International Searching Authority (ISA), with the amount depending on the selected searching authority. For example, the International Searching Authority associated with the European Patent Office (EPO) charges approximately €1,800. The fees charged by the searching authorities in China, Russia, and India are lower and more cost-effective.
The cost of entering the national phase is one of the most expensive stages for an inventor, as a separate registration fee must be paid in each destination country. If desired, the applicant can request an international preliminary examination after receiving the initial report to increase the chances of patent registration in the destination countries, which requires an additional fee.
Factors Affecting PCT Patent Registration Costs
As mentioned, registering a patent through the international system requires fees to be paid at each stage. The cost of patent registration through WIPO depends on a range of official, technical, and administrative factors, with the most important variables including the destination country, the length of the application, and translation costs. Some of the most important factors affecting patent registration costs include the following:
- Currency Fluctuations and Payment Method
- Technical Complexity of the Invention
- Use of an Attorney or Intellectual Property Services Company
- Application Language and Translation Costs
- Number of Pages and Length of the Application
- Entering the National Phase in Selected Countries
Methods for Reducing International Patent Registration Costs
Although the cost of PCT patent registration is high, these costs can be significantly reduced through careful and strategic planning. Some of the most important methods for reducing patent registration costs at the international level include the following:
Smart Selection of Target Countries:
To limit costs, countries should be selected that have strong financial markets, high commercialization potential, and a high risk of imitation.
Maximizing the 30-Month PCT Period:
The PCT system allows the final selection of countries to be postponed for 30 months, providing sufficient time to attract investors, evaluate the market, and assess the commercial value of the invention.
Professional and Optimized Preparation of the Application:
Precise drafting of claims, reducing the number of pages in the application, and avoiding repetitive explanations can be highly effective in reducing costs.
Appropriate Selection of the International Searching Authority:
Selecting a lower-cost authority can result in savings during the international phase and reduce the likelihood of opposition and amendment costs in the national phase.
FAQ
No, PCT registration is only an initial step, and the inventor must complete the specific procedures required by each country to obtain patent protection in other countries.
These steps briefly include preparing the application, paying the fees, conducting an international search, preliminary examination, entering the national phase, and examination and issuance of a patent certificate in each country.
The initial filing takes a few days, and obtaining the search report requires approximately 3 to 6 months. After that, you have 30 months to enter the national phase.
In most countries, a patent is not renewable after 20 years. However, in certain special cases, such as inventions related to pharmaceuticals or similar products, the patent may become part of the public domain after this period.
To maintain the validity of the registration, you can pay the required fees annually or periodically. It should be noted that if these fees are not paid, the patent certificate will become invalid.