When an applicant desires to obtain patent protection for an invention in several countries, they may initiate by filing direct applications in each country.
However, this may be undesirable for a number of reasons:
1. The invention would likely need to be refined from a rudimentary form.
2. The initial total cost of filing would probably be very steep.
3. Potential investors would probably not be entirely sold on the idea and thus not provide much funding to support the business or the patenting process.
4. The specification of the application would likely not capture the invention in its entirety. Other features could be developed into the invention after the applications are lodged.
As such, an applicant is advised to start from a point at which they can stretch the patenting process in a way that allows them time to:
- refine the invention,
- gather financial resources for patenting,
- gather investor backing for the business, and
- be extra creative with the invention and multiple embodiments thereof.
This starting point is a provisional patent application.
The provisional application allows the applicant to “fairly” describe their invention. One does not have the pressure of being too specific.
From the provisional filing date the applicant has twelve months to practice one of two options:
The first option will be to file complete applications into each and every country in which patent protection is desired.
The problem here is that generally every country examines the application for three things: is the invention usable, new and non-obvious? The examination process is rigorous and costly as the applicant has to address each and every objecton from each respective examiner. Each examiner will have their own views and in the end the applicant may find their application being refused in some countries and accepted in others for different reasons and in different forms of refinement. This creates business uncertainty.
The second option will be to file an “international” application. This is called a PCT (Patent Cooperation Treaty) application. This application does not lead to patent rights. It is essentially a process that takes 30/31 months from the provisional filing date, the process including examination of the application and refinement of it by the applicant so as to get it to a somewhat more acceptable form.
After the 30/31 month period (during which the applicant has hopefully received enough investor backing and raised money to file into each country) the applicant is able to take the more refined and more acceptable form of the application into each country of their choosing. This is called the National Phase. The costs of filing would be significantly lower at this point.
While each examiner in each country will also examine the application, that examiner will take into account the considerations and conclusions of the PCT examiner.
This will likely reduce the objections that would have been raised without refinement of the application during the PCT process. As such, this would in all probability save the applicant money while quickening the decision of each country’s examiner to accept the application.
This would also mean that accepted applications are more or less in the same form, meaning that the applicant is more assured of the protection of the most significant aspects of the invention in all countries in which the invention is accepted. The business is then on more certain ground.