George Schlich

May 2015

Background

Applicants wishing to obtain patent protection in more than one country have various options for doing so. One strategy is to file a first application at, say, the UK Intellectual Property Office (UKIPO) or the European Patent Office (EPO), and then file a family of patent applications in the various countries of interest within 12 months of and claiming priority from the first filing. The priority system, amongst other things, enables the applicant to delay by 12 months deciding whether and where to file follow up applications. This priority year can provide useful time to confirm whether the invention is commercially viable, to obtain financial backing and to take a view on the patentability of the invention with the help of searches such as those carried out by the UKIPO or EPO.

The priority system can be sufficient for applicants who wish to file follow up applications in only a few countries. However, applicants often want to defer the costs involved in pursuing a broader filing strategy by more than one year.

International patent applications filed pursuant to the Patent Cooperation Treaty (1973) provide a way of obtaining the option to further defer the decision as to whether and where to embark on an international filling strategy. Thus, for example, an international application enables applications to defer the decisions to file and prosecute applications in Europe and the USA by a total of 31 and 30 months, respectively, from the international application date or from the date of first filing for international applications claiming priority.

An international application also provides a high quality international search, which for European applicants is provided by the EPO.

The period between filing an international application and filing follow up national and regional patent applications is called the international phase. An international application provides the option to begin prosecution in the form of argumentation and/or claim amendments in the international phase. This is useful because it may be possible to obtain an opinion in the international phase that states that part or all of the invention is patentable, which may make subsequent national and/or regional prosecution simpler and thus cheaper.

Until recently, prosecution in the international phase could only take the form of simply amending the claims in response to the international search, or entering the application into international examination, which is relatively expensive.

However, since November 2014, there has been another option at the EPO: PCT Direct.

PCT Direct

Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO will be able to react to any objections raised in the search opinion drawn up for the priority application. Thus, PCT Direct is an option, for example, for an international application filed at the EPO (a Euro-PCT application) claiming priority from a first application filed and searched at the EPO (“the first EPO filing”).

PCT Direct enables applicants to submit, at the time of filing an international patent application, amended claims and argumentation in response to issues raised in the search opinion that accompanies the search report issued on the first EPO filing. In this way, it is possible to take advantage of an additional opportunity to prosecute the case in the international phase.

Since the claims and response are filed at the time of filing the international application, the subsequently issued international search and the opinion that accompanies the international search take into account the submissions made under PCT Direct.

PCT Direct provides a further option for prosecution in the international phase because it preserves the right to amend the claims in response to the international search, or entering the application into international examination.

Conclusion

PCT Direct provides an additional prosecution option for Euro-PCT international patent applications that claim priority from an application filed and searched at the EPO. It adds some costs to the filing process, but if successful, PCT Direct can provide a more favourable international search opinion, which can reduce the prosecution costs for subsequent national and regional applications.

Overall the system gives applicants a powerful new tool to accelerate patent grant.

If you want to include PCT Direct in your filing strategy, please contact Schlich Ltd for more details.