INTERNATIONAL PATENT APPLICATION (PCT)

PCT applications are filed so that eventually granted patents can be obtained within 148 contacting states of the PCT system after nationalization of the PCT application. Filing of patent applications following the PCT route has many advantages such as;

  • delaying of the costs at least 30 months until the national/regional filings;
  • gaining time for commercialization of the invention before national phase entries in the concerned countries;
  • obtaining a preliminary report on patentability which may be helpful for determining the future patenting strategy; and
  • reducing the costs in national/regional stages.

As noted above, PCT is not a system granting patents, but is actually designed to confer the procedural and economic benefits to the applicants. The 30-months procedure is outlined below in a simplified manner.


Filing & costs of a PCT application

Place of Filing: The authority by which the PCT application must be filed depends on the Receiving Office (RO) prescribed for the specific country of the applicant. An applicant having nationality or place of business in Turkey, for instance, may file the PCT application before the following authorities;

  • Turkish Patent Institute (TPI),
  • International Bureau (IB), and
  • European Patent Office (EPO).

Applications filed before a non-competent authority, however are submitted to the IB as a courtesy service.

Official fees:

EUR-3.089.00 (Assuming that EPO is the Receiving Office; a reduction of EUR-163,00 applies if the application is filed online)

Possible additional fees:

Fee for certified copy of the priority:                EUR-50,00
Additional page fee for pages exceeding 30:    EUR-12,00/page

Minimum requirements of a PCT application:

Applicant should normally supply the following items in order to meet the basic requirements prescribed by the law (PCT-Art. 11) in order to obtain a filing date:

  • applicant should have a right to file a PCT application,
  • an application in the prescribed language for the applicant,
  • an indication that it is intended as an international application,
  • designation of at least one contracting state,
  • the name of the applicant as prescribed,
  • a description,
  • one or more claims.

An International Search Report (ISR) is issued after payment of the prescribed fees and accomplishing the basic requirements mentioned above. An International Search Report contains data of pertinent prior art along with comments of the Examiner concerning patentability. If the ISR contains negative statements and unfavorable opinion as to the patentability, applicant may follow one of the options mentioned below;

- filing PCT-Art. 19 amendments before the International Bureau,

- filing a demand and possibly PCT-Art. 34 amendments before the Examining Authority,

- waiting for expiration of the 30-month timelimit and dealing with the objections in national/regional phases.

Examination Stage (optional)

Official fees: EUR-2.093,00 (due on 22 months after the filing or earliest priority date)
Applicant may prefer to file a demand for an international examination in order to overcome the objections in the ISR. This would be preferable because a positive International Preliminary Examination Report (IPER) may considerably reduce the costs and Attorney work in national/regional offices after the PCT phase. Along with the demand, applicant may file a response to the ISR and possibly Art. 34 amendments as mentioned above.

Irrespective of whether an examination is carried out in the PCT phase, a Preliminary Patentability Report (IPER) is nevertheless prepared before the 30-months timelimit. This report is sent to all of the designated/elected offices by WIPO, for to be considered in further proceedings in the concerned states.

Renewal Fees

There are no renewal fees for international applications. However, applicant may be incurred with the renewal fees of past years upon entry into national/regional phases.

Third Party Observations against PCT applications

WIPO has very recently announced that third party observations can be filed against pending PCT applications, for instance via ePCT Public Server and WIPO’s PATENTSCOPE services. Accordingly, third parties may “anonymously” file observations and counter evidences against patentability of a PCT application within 30 months starting from the earliest priority date. Also applicant has the opportunity to file response to the observations and all submissions are made available to the public as well as to the searching and examination authorities.

National/Regional Phase Entries

Once the international phase is completed within the 30-months, the application needs to be nationalized or regionalized in order to be put it into effect in desired countries. A Euro-PCT application, for instance, may be regionalized by entry into the European phase until 31 months from the earliest priority date. If the EPO was the International Searching Authority, the applicant does not need to pay the search fee once again in the European phase. If the EPO has acted as the International Examination Authority, special refunds are available also with respect to the concerned examination fee at the EPO. If the applicant misses the prescribed deadlines for national/regional phase entries, most offices still admit applications generally within an additional 3 or 6 months provided a surcharge is paid upon entry. National offices may also prescribe additional requirements such as additional search and examination.