Abogados Daudén
Trademarks, Community Design and Patents experts in Spain

Avda Maisonnave nº 11, 2º dcha.
03003 Alicante – Spain

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Tel: +34 965 135 918
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PATENTS AND UTILITY MODELS

International patent

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO). The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. Nevertheless, the granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.

The PCT procedure consists of two main phases. It begins with the filing of an international application and ends (in the case of a favourable outcome for the applicant) with the grant of a number of national and/or regional patents: hence the terms “international phase” and “national phase.”

1. “International phase”: the PCT application is filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant’s option, with the WIPO. The international application is then subjected to what is called an “international search”, which results in an “international search report” – that is, a listing of the citations of such published documents that might affect the patentability of the invention claimed in the international application – as well as in a “written opinion” on patentability. The “international search report” and the “written opinion” are communicated to the applicant who may decide to withdraw his application, in particular where the said report or opinion makes the granting of patents unlikely. If the international application is not withdrawn, it is, together with the international search report, published by the WIPO. There are other two steps in the “international phase”: the “supplementary international search” (which reduces the risk of new patent documents and other technical literature being discovered in the national phase) and the “international preliminary examination and report on patentability.” On completion of the international phase, further action is required before and in each of the national (or regional) Offices which the applicant wishes to grant him a patent on the basis of his international application. In particular, the applicant has to pay to those Offices the required national (or regional) fees, furnish them with any translations that are required and appoint a representative (patent agent) where required.

2. “National phase”: It is only after you have decided whether, and in respect of which States, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent.