PCT (Patent Cooperation Treaty) is a multilateral agreement between a number of countries on patent protection. See updated list of member countries.
1. Before the Norwegian application is 12 months old, it is possible in most countries to file a corresponding application with priority claim. In practice the application carried forward abroad will then be considered filed at the same time as the Norwegian application. An alternative is to file a PCT application within the first 12 months, thereby extending the time limit for applying for a patent abroad from 12 months to 30 months (2 1/2 years counted from the filing date of the priority-founding application). In some countries, and for a European Patent application, the time limit is extended to 31 months. Costs connected with filing applications in foreign countries will thereby be delayed by 1 1/2 years. There will also be more time to consider in which countries it would be prudent to apply for a patent. This is an important point as it is often difficult at an early stage to foresee which markets will be commercially interesting for the invention.
2. The application will be examined to reveal if the invention has been known before. As a result of this examination a novelty search and examination report is issued. If the PCT authorities do not find the submitted invention to be patentable, a negative novelty search and examination report is issued; if this is not the case and the invention is seen as patentable, then a positive report will be issued. The report may be responded to with a request for a preliminary examination of patentability (Phase II). This must always be done within one of the following time periods, whichever expires las:t: a) within 3 months from the date of receipt of the report, or b) within 22 months from the filing date (priority date) of the Norwegian application.
If a preliminary examination of patentability is not requested, the PCT authorities will issue an International Preliminary Report on Patentability. The applicant may submit comments to this, which will then be sent, along with the report, to all member countries. The receiving patent authority may demand that the comments be translated to a national language.
3. If a preliminary examination of patentability is requested within the stipulated time limit, it must be argued at the same time that the invention is patentable, and the Claims must possibly be amended. The application will then be processed on its merits by a concrete assessment as to whether the conditions for obtaining a patent are met, namely novelty, inventive step and industrial applicability. Further dialogue with the examiner will not be allowed. Within 28 months of the priority date the examiner must present his examination report, expressing whether, in the examiner's opinion, the application meets the above-mentioned requirements for patentability. In principle this completes the PCT processing.
4. Within 30 months (31 months in some countries) from the priority date the application must be carried forward in those member countries where it is deemed desirable to apply for a patent. The application may also be carried forward in other ways, for example as a European Patent application. If the PCT search and examination report is positive, this will often mean lower processing costs in the individual countries. On the other hand, the patent authorities of the different countries are not in any way bound by the PCT report. This means that it is still possible to challenge the PCT, in order to obtain a patent, should the report be entirely or partially negative. Instead of filing a patent application in each individual country, it is possible to file a European Patent application (EP application) for the countries that are parties to the European Patent Convention. It is also important to note that in some countries – such as Belgium, France, Greece, Ireland, Italy, Monaco and the Netherlands – it is a condition for obtaining a patent that the PCT application has been carried forward as a European Patent application.
5. Applicants should bear in mind that extra costs will likely be incurred to go through the PCT system. It may also take considerably more time before a patent can be obtained in each country. However, as mentioned above, there are several advantages to filing a PCT application, for instance the delay of costs connected with filing applications in the individual countries.
6. The price for filing a PCT application will vary with the length of the application (due to translating costs). If the application is of "normal" length, the price will typically be in the region of NOK 50,000-55,000 inclusive of a preliminary examination of patentability (Phase II). If Phase II is left out, the price will be approximately NOK 40,000-45,000. In addition, procedural costs may accrue during the processing of the application. However, as it is not known what objections the examiner might present, it is difficult to predict these costs. Håmsø Patentbyrå is one of the largest agencies in Norway when it comes to filing PCT applications. Therefore, we are well acquainted with the formalities of this type of application and can guarantee a swift and correct handling of the PCT application.