PCT INTERNATIONAL PATENT

The Patent Cooperation Treaty (PCT) was signed in Washington in 1970 and it allows the filing of a single “international” patent application in which it is possible to designate more than 150 Member States who signed this Treaty and substantially comprising all the most industrialised countries worldwide.

The main advantage of the PCT International Patent application lies in the fact that it allows to postpone the moment in which to decide in which States to extend the patent application thereof up to 30 months from the date of filing (or from the priority date if present).

As a matter of fact, at the end of the PCT International Patent procedure, no patent is granted, but a patent procedure must be undertaken for each State in which one wants to obtain a patent.

A search report and preliminary examination (written opinion) is issued during the examination phase of the international application. Upon payment of a fee, an actual examination phase (Chapter II) can be conducted in order to respond to any objections contained in the written opinion, upon consulting the examiner. An International Examination Report is issued at the end of the examination procedure. However, it is not binding for any country in which the patent application will continue the procedure.

The PCT International Patent Application, in each designated State, is equivalent to a national application filed before the National Patent Office of the individual State.

Patent protection takes effect starting from the publication of the PCT International Patent application. However, in order to act legally in the various designated States, the international application is not generally sufficient. As a matter of fact, it is necessary to obtain the grant of the application after entry into the national phase of the State and comply with the examination provisions laid down in individual national legislation. In the event of infringement, the proprietor of the international application may decide to enter the national phase of the State of interest even prior to the expiration of the 30-month period, in order to first grant the intellectual property right in that country so that it can be applied against infringing parties.

In Italy, by way of exception with respect to the other countries, it is possible initiate litigation even starting from an international application provided that the claims have been translated into Italian and filed before the UIBM.