In order to benefit from a protection of your invention outside Europe, the Patent Cooperation Treaty (PCT) is often an effective solution. The major advantage of the PCT is that it allows for only one application for protection for different countries and triggers an international prior art research and, possibly, a preliminary examination of other conditions for patentability. The preliminary examinations are then transmitted to other national or regional offices. The application is then processed in the countries for which a patent is applied for as if it were a national application and according to the procedures and regulations in force in those countries. Only countries that are members of the PCT Union may be designated in an international patent application. The PCT is managed by the WIPO.
This procedure offers other advantages. It makes it relatively easy to obtain a priority date for the different countries in which you want to obtain protection. If you are seeking international protection, this system based on a single application is also more cost-effective. Another advantage is that you have 30 months from the filing date of the international application (or, where the priority of a patent application has been invoked, the priority date) to decide whether, and in which countries, you wish to continue the patent application procedure. This makes it possible to defer additional procedural and translation costs. In the meantime, you can also further assess the opportunity of the patent in certain countries, look for partners to exploit the invention or plan your business strategy.
Procedure
The procedure is divided into two phases. First, an international patent application must be filed with a competent national or regional body that will process the application. This is the international phase of the PCT procedure. A prior art research will be carried out and, upon request, a preliminary examination of the conditions for patentability will be carried out which is non-binding for the applicant will be carried out. The patent application and the search report must be published online within 18 months from the filing date of the application (or, where the priority of a patent application has been invoked, the priority date) and will be available on the website of the World Intellectual Property Organisation (WIPO).
After that, the applicant must decide whether to continue the procedure in the various designated countries. This is the national/regional phase of the PCT procedure. To this end, the applicant has a period (in principle 30 months, 31 months for the European Patent Office) from the filing date of the application (or, where the priority of a patent application has been invoked, the priority date), to complete the necessary formalities, including filing translations and paying fees in each country. The procedure then continues in accordance with national or regional rules and procedures.
The PCT procedure does not grant you a Belgian patent. Only a European patent can be selected in the international application for protection within Belgian territory. Throughout the examination of the application by the European Patent Office, during the national or regional phase, it will be possible to designate the countries of the European Patent Organization (including Belgium) for which protection is sought.
In practice…
You provide the application form to the European Patent Office or the International Bureau of the WIPO.
However, there is one exception for which the application form must be submitted to the Belgian Intellectual Property Office in Brussels. This exception applies when you meet the following two conditions:
- you are Belgian or your domicile or registered office is in Belgium; and
- and your request may be relevant to the defence of Belgian territory or State security.
It is the responsibility of the applicant of the international patent application to check whether the invention which is the object of the application may actually be relevant to the defence of Belgian territory or to State security.
Do you need to be represented or can you submit your application yourself? Having representation is recommended. See contact an expert.
For more information, see the websites of the EPO and the WIPO.
