International patent

International patent application - PCT (Patent Cooperation Treaty)

The international one is a unified procedure (called PCT, Patent Cooperation Treaty) for the filing and search of patent applications, but it does not provide for grant. There are therefore no granted international patents, only international patent applications.

In general, and subject to some exceptions, the international procedure lasts 30 months from the filing date of the patent application or from the priority date, if claimed. The application may be filed in Italian, but it must then be translated into English. At the time of filing, the filing fee, the search fee and the transmittal fee are paid.

With the international patent application, about 150 countries are temporarily designated, that is, for the duration of the procedure only, in practice all the industrialised countries in the world. The fees due at the time of filing amount to approximately EUR 3,000.

After about 8 months, the competent patent office issues the search report, containing the prior-art documents considered relevant by the examiner, and its preliminary opinion on the patentability of the technical solution claimed in the application. Optionally, it is possible to request an international preliminary examination of the application, the outcome of which is not binding for the continuation of the procedure.

At the end of the 30 months, the international procedure ends; the international patent application ceases to exist and must be transformed into a bundle of regional or national patent applications in the individual countries of interest to the applicant. This phase is defined by the legislation as "entry into the national/regional phases".

In each country in which it is decided to proceed, the translation of the patent application into the national language must be filed and the fees provided for by the local patent office are paid. Each national/regional application originating from the international application will then undergo a substantive examination by the competent patent office, according to the law applicable in each jurisdiction, and may possibly be granted. The procedures, timeframes and fee regime for the examination vary from country to country. The patent application will therefore proceed only in the countries chosen by the applicant among the approximately 150 initially covered.

The international procedure is extremely useful for postponing the choice of the countries of actual interest to the thirtieth month.

This timeframe can enable the entrepreneur to take part in more than one trade fair, understand market trends, conclude commercial agreements for the territories not directly reached, find partnerships or investors, etc. The choice of the countries in which to continue the patenting procedures can therefore be made knowingly.

The professionals at the Biesse firm have built up long experience in pursuing patent applications around the world. In the simplest case, the international procedure develops according to the following scheme: PCT procedure (simplified)