Most of our client's file their overseas patent applications via the PCT (Patent Cooperation Treaty) process. There are many good reasons for this, but one of the ones I wish to focus on is how to use the examination process to their considerable advantage.

When a PCT application is filed, the PCT examiner conducts a search of relevant prior art and sends us the results. Analysis of these results by the client and the patent attorney can give a good interpretation as to the patentability of the invention. If a Demand fee is paid, we can then enter into a dialogue with the examiner and make amendments – hopefully resulting in a favourable examination report.

There are pros and cons to this approach as outlined below.

(a) A favourable report should be sought:

  • To save a considerable amount of money!

If you can resolve many of the outstanding issues at the PCT stage, you do not have to multiply those charges on a country by country basis. Patent attorneys are not cheap and it is desirable to avoid replication of charges unnecessarily through repeated prosecution of the same issues in each country.

  • To convince potential investors that there is an invention considered patentable by an independent authority.

This generally carries more weight with an investor than any representations from the patent applicant.

  • To assist in the decision as to whether to file national phase applications. If a successful examination report cannot be gained, that is an indication that patent protection could be weak.

Advantages of not responding to an examiner's report include:

  • The invention is inherently weak and you wish to have broad claims that act as a deterrent to other parties. This is of limited use as if potential competitors / partners are IP savvy as they would have their own attorneys conduct an equivalent analysis to that of the PCT examiner (which we have performed on a number of occasions).
  • Cited prior art has different relevance in different countries – for example it may have been published within the US grace period. This is something that we are highly conscious of and always review the relevant dates before suggesting any potential narrowing of the claims.
  • There is no further money for this project and the PCT application is in a holding pattern.

Talking to an intellectual property adviser can help determine the best course of action.

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.