Patent rights may be obtained by filing directly in relevant jurisdictions or by first filing a PCT application.
Most countries of the industrialised world are members of the Patent Cooperation Treaty (PCT).
It is possible to file a PCT patent application. A PCT application does not result in the grant of an international patent. Instead a single PCT application is considered to be an application in each and every member country. However, it is necessary to proceed from a single PCT application to separate and independent patent applications in each jurisdiction for which protection is sought. A PCT application delays the need to proceed to these individual applications to 30 months from the earliest priority date of the application. Assuming the PCT application is filed within 12 months of the first application for the invention this provides an additional 18 months compared to filing directly in individual jurisdictions.
The cost of a PCT application is an extra cost and, generally, does not significantly reduce the costs of proceeding to individual applications at the end of the PCT stage. However, as part of the PCT process, the Patent Office conducts an international search which gives an indication of the novelty and inventiveness of the invention. Whilst the search gives a good indication of the patentability of the invention, it is not definitive. After proceeding to individual applications, each jurisdiction usually conducts a further search on the application. Our experience has been that more relevant prior art is sometimes discovered during prosecution of these independent patent applications. After receiving the PCT search the applicant has an opportunity to amend the claims of the specification so as to better distinguish the invention from the prior art. This can result in significant cost savings, since a single action at the PCT stage may avoid essentially the same objection being repeated with each individual application at a later date.
International Preliminary Examination (IPE) is an optional action which may be requested by the applicant at any stage of the PCT process. The aim of IPE is to provide an opinion, from a patent examiner, as to novelty and inventiveness of the invention as claimed .It provides the applicant with further opportunities to amend the claims and the description of the to application so as to put the application in a better form than otherwise.