Australia: Use of the PCT system, and advantages and benefits of International Preliminary Examination (IPE)

Last Updated: 23 October 2018
Article by Michael Zammit

There are a couple of ways to file a patent application in a country of interest. The choice is usually based on a commercial strategy, and balanced by cost considerations. If protection of the invention is required in only a few countries, it is usually most cost effective to file directly into those countries and claim priority to any provisional patent application which has been filed – known as (Paris) Convention applications. Alternatively, where an applicant requires more than a few countries, it is more common to file a Patent Cooperation Treaty (PCT) patent application (and claim priority). It is also possible to pursue Convention applications in parallel with a PCT application.

The strategy of filing Convention applications incurs the relatively-expensive filing costs sooner compared to filing a PCT application, where the major filing costs are deferred for 18 months – a period referred to as the International Phase. In other words, the PCT application takes the place of the individual foreign patent applications that would otherwise have been required. After the International Phase, in a period referred to as the National/Regional Phase, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought.

What is the PCT system?

The PCT is an international agreement administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world. A list of the PCT contracting/member states can be accessed here. The IB receives all of the PCT applications, wherever they were originally filed, maintains compliance with PCT rules, maintains an official record of all PCT applications, forwards copies of relevant papers in PCT applications to regional and national patenting authorities, and publishes PCT applications.

Advantages of the PCT system

One significant advantage of a PCT application is deferral of the cost of the national phase applications, allowing Applicants more time to explore the commerciality of the invention. The PCT is also an attractive option for applicants who intend to find licensees for their foreign patent rights, as the PCT keeps the options open in many countries and then the licensee can pay the costs of prosecution in any countries in which the licensee is interested.

Another advantage is that a PCT application is automatically subject to both search and examination, and therefore provides some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before the major filing and prosecution costs are incurred. The PCT system permits a central prosecution before a single patent office, and can be used to reduce the number of objections that will need to be addressed later, before individual patent offices, thereby lowering prosecution costs. The PCT application route is costlier initially due to the filing costs of the PCT application itself, however it may be more cost effective overall due to streamlined prosecutions.

The PCT system can also be used to manage risk. For example, if the invention disclosed in the PCT application is subsequently found to be unpatentable in view of the prior art, an early decision can be made to withdraw/abandon the application, thereby avoiding the national phase filing costs.

The PCT system is also flexible in that if the applicant requires further time to raise funds or assess the potential of the invention the priority claim can be withdrawn close to the national/regional phase entry deadline, effectively extending the deadline to file national/regional phase applications. Of course, the applicant should only take this step if unaware of any relevant publications.

Examination of PCT applications

The PCT system does not examine patent applications fully, and it does not grant patents. The examination may be without interaction between the applicant and the Examiner (under Chapter I) or with interaction between the applicant and the Examiner (under Chapter II). By default, the examination is performed under Chapter I, unless a Demand is filed under Chapter II.

  • Chapter I: The main steps include: filing the PCT application, preparation of the International Search Report (ISR) and the Written Opinion (WO) of the International Search Authority (ISA), and the publication of the international patent application, with the ISR and any amended claims which have been filed. If a Demand is not filed (see below), the WO is later reissued as the International Preliminary Report on Patentability (IPRP) under Chapter I (IPRP/ Chapter I).
  • Chapter II: Chapter II is optional and is also known as International Preliminary Examination (IPE). The main steps include: the filing of a Demand including amendments and/or arguments to address any objections raised in the WO, and the subsequent preparation of the IPRP/Chapter II. Obviously if the WO is clear of issues of patentability, there is no need to file a Demand and undertake IPE.

What is International Preliminary Examination?

IPE is used to obtain "a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable"1. It is carried out by an International Preliminary Examining Authority (IPEA) at the request – called a "Demand" – of the applicant, and gives the applicant the opportunity to evaluate the prospects of obtaining patents in the countries of interested before incurring the expense and trouble of entering the national phase. Fees are payable for making the Demand, and it must be filed within a certain time limit and accompanied by a response to the WO. The examination is "preliminary", since a final opinion will be formulated only in the national phase by the national or regional patent office, and is "non-binding" on anyone, including national/regional patent offices.

It is not necessary to file a Demand if you the applicant is content with the WO being reissued as an IPRP, and is happy to address any objections raised during the regional/national stage. For example, where the objections raised in a WO relate to matters of inventive step the applicant may choose not to respond to the WO. This would allow the applicant to address the inventive step issues separately before each national office, and in accordance with national inventive step law and practice.

The PCT application is filed with a Receiving Office (RO) and is followed by search of the application by the ISA (who prepares the ISR and WO). For nationals and residents of Australia, the choice of RO is IP Australia or the IB, and the choice of ISA (and IPEA) can be IP Australia or the Korean Intellectual Property Office (KIPO).

What is examined?

There is not a uniform approach to the criteria for examining patentability in the national laws of each of the 150+ countries that are currently party to the PCT. Therefore, the criteria on which IPE is based correspond to internationally accepted criteria for patentability, namely: novelty2, inventiveness3, and whether the invention is industrially applicable4. A secondary objective is to identify whether there appear to be any defects in the form or content of the international application, for example with regard to clarity (claims, description, drawings), whether the claims are fully supported by the description, or whether there are multiple inventions claimed (lack of unity of invention). Additional objections can relate to inconsistencies in the description (ambiguous syntax, relative terms, etc.), whether there are too many independent claims in one category (conciseness), and whether the claims are framed in a result to be achieved (stating the desired result without explaining how the result is achieved).

What are the benefits of IPE?

According to the PCT guide5, while the IPRP is not binding on a patent office, "it carries considerable weight ... and a favorable report will assist the prosecution of the application..." Also, an application "... will generally proceed rapidly to the grant of a patent" where the IPRP is favourable. In practice, this is generally true for many countries, although many countries will use the IPRP as the starting point for further examination in the national/regional phase, especially the larger jurisdictions such as the US, Europe, China, and Japan, and will effectively start "from scratch". Despite starting from scratch, the IPE procedure is of some benefit as many of the issues will have already been addressed prior to national phase prosecution, thereby potentially expediting prosecution in these countries and reducing overall costs.

From a risk management perspective, obtaining a clear IPE can also be of benefit to licensees, who can take some comfort from a clear report, and can make commercial decisions based on the likely scope of the claims.

What happens after the international phase?

The normal deadline for entering the National/Regional Phase is 30 or 31 months from the priority date, depending on the country, although it is possible to enter the National/Regional Phase "early", before the deadline. The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney to handle the application, filing formal documents signed by the inventor/applicant, and paying official fees to the patent office of that jurisdiction. Once filed, the application is handled and examined according to the usual treatment of patent applications in the countries/regions involved, and all of the local time limits, laws, rules, and procedures must be observed.

Closing comments

The decision of whether to file Convention applications or a PCT application (and subsequently enter the national/regional phase) depends on the budget and the commercial strategy. Assuming a PCT application is filed, there is a further decision on whether to file a Demand, which depends on factors such as the commercial stage of the product, the interest of licensees, the scope of the planned national/regional filings, the budget, and the scope of the prior art cited in the ISR. We recommend that you discuss these important matters with your Shelston IP attorney early in the patenting process so that there is a targeted strategy for your innovation.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

Footnotes

1Article 33(1)

2 Article 33(2), and Rule 64

3 Article 33(3), and Rule 65

4 Article 33(4)

5 http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Michael Zammit
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions