Home > Topics > Patents and Patenting: Balancing Protection with the Public Domain > A Guide to International Patent Protection > Editor's Summary, Implications and Best Practices

These two chapters review the complex aspects of filing patent applications using the Patent Cooperation Treaty (PCT) options. The two chapters are extremely complementary and discuss the practical aspects from different points of view.

Several key factors should be reviewed when approaching the international production, marketing, distribution and sales of a new and innovative product or process for which patent protection will be sought. These factors include a full range of various business and legal issues that, once considered will provide the international patent protection options that can then be evaluated and appropriately selected, according to an organization’s business goals and financial resources.

Depending on a given organization’s goals and resources, there are several patent application options, each of which has potential advantages and disadvantages. Alternatives include filing separate patent applications in each nation or region where protection is sought or filing a patent application in accordance with the Paris Convention, which establishes a priority filing date that gives the exclusive right to file for patents in other Paris Convention countries for one year. This has advantages when filing in a very limited number of countries with a certainty that prosecution will be actively pursued. It also avoids the costs associated with the intermediate steps of filing in the PCT or regional patent offices prior to filing nationally. But it has the following disadvantages: each application will be independently examined (that is, no deference given to a prior favorable review in a different country), and government filing fees and translation costs will be due early in the patenting process.

Another option is the PCT application, an indispensable tool for delaying, consolidating and minimizing international patent costs, and a unified and simplified procedure for filing multiple foreign patent applications using a single initial application. The PCT has standardized the filing and preliminary evaluation of international patent applications. Consisting of over 130 member countries, it is administered by the World Intellectual Property Organization (WIPO), which reviews and then distributes PCT applications to designated member countries. The process of filing the PCT application in individual patent offices can be delayed for up to 30 months. During this time, the applicant will also receive the results of the WIPO International Preliminary Examination of the PCT application. For many countries, especially those with developing capacity in patent prosecution, national offices tend to give deference to the PCT International Preliminary Examination Report, and so they may not conduct a further search.

There are several advantages to filing a patent application via the PCT route:

• Only a single filing fee is required (instead of multiple fees for multiple countries.
• Future foreign patent rights are preserved; the applicant to delay national entry into PCT member countries for up to 30/31 months from the priority date.
• PCT filing allows for further market analysis, and greater options for obtaining a licensee or business partner for the invention.
• The preliminary examination report early on addresses the issues of novelty, inventive step, and industrial applicability of the claimed invention.
• The published PCT application serves as an “advertisement” for prospective partners.
• The standardized PCT application removes translation and formatting obstacles, further reducing costs.
• The PCT application provides an early assessment of the patentability of the invention and can suggest how the application might be strengthened before being submitted to individual patent offices.

Importantly, the PCT has an additional advantage: it can be used as a strategic patent portfolio management tool to manage costs and maximize distribution and to categorize countries according to the potential deployment of humanitarian assets. Cost-effective, strategic management of patent portfolios promotes efficiency and thereby realizes the greatest returns. PCT-based portfolio management is equally applicable towards maximizing returns on investment (for example, private-sector economic and market interests driven by profit requirements) or for optimizing humanitarian access (for example, public-sector initiatives driven by public interest rationales). Hence, one distinct advantage of the PCT is that it provides more time to find global partners to advance humanitarian initiatives (for example, funding agencies and foundations, corporate donors, contract manufacturers, national laboratories, national agricultural research centers, suppliers, or distributors). As is usually the case when it comes to working within the global IP system, creativity and imagination can allow non-profit organizations and developing countries to use the system to meet their needs.

A potential alternative to PCT filing or filing directly in each country of interest is to file in a regional patent office. These regional patent offices have come into existence through international treaties and include the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), and the Eurasian Patent Convention (EA). The advantages of this approach are that some translation costs may be eliminated, and substantive examination of the regional patent in each of the designated countries may not be required. Indeed, if protection is desired in a number of member countries, this approach is especially cost-effective. But of protection in only a few member countries is desired, it may be less expensive to file applications in each country individually and avoid the costs associated with the intermediate steps of first filing in the regional patent office. Also, not every target country may be a member of a regional convention.

If well managed, international patent protection can give an organization many strategic and economic advantages. But implementing such patent portfolio management requires careful planning, coherent organization, and a thorough knowledge of an invention’s potential. Finally, remember that such a strategy can be effectively employed to maximize either business or humanitarian objectives.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• For a country to be a party to key international patent treaties, specifically the Patent Cooperation Treaty (PCT) and the Paris Union Convention, has many advantages and benefits, both short and long term.
• Membership in key regional patent organizations has many benefits and advantages. Such membership will provide valuable opportunities for regional partnerships, enhanced distribution of patented inventions and innovations, and may include increases in foreign direct investment.
• Provide for legislation, or for amendments to current statutes, that facilitates patent filing by foreign entities. This is a primary driver of technology transfer and development.
• The PCT, together with fair and equitable local laws, transparently and predictably enforced, will protect local investments in technological innovation, and also greatly facilitate their entry, at an affordable cost, into the global technology markets. In a sense, then, the PCT functions as an equalizer, providing opportunities for all who take advantage of it.
• The government can assist in taking full advantage of the PCT, by, for example, setting up a national network of governmentally supported organizations/foundations that encourage, promote and even subsidize invention, innovation and IP management.
• Membership in the PCT provides significant resources for new patent, IP and technology transfer offices. These include World Intellectual Property Organization (WIPO) support and resources, and also cost effective examination of patent applications.

For Senior Management (university president, R&D manager, etc)

• It is important to develop an overall institutional policy that promotes international patent protection, both from the standpoint of patenting the inventions arising out of an institution, and also from the standpoint of developing partnerships with foreign technology owners who may file patent applications in a country. Properly implemented, this type of policy can contribute to driving innovation and technology transfer.
• The distribution and exposure of Patent Cooperation Treaty (PCT) applications serves as a worldwide advertisement for new inventions. Thus, potential licensees and/or partners will become aware of opportunities for further development and commercialization of these inventions.
• Support for an institution’s technology transfer office, particularly in its implementation of a comprehensive patent portfolio management strategy (which includes national, regional and international patent application filings) should be a key priority.
• By facilitating control of patent rights at an international level, the PCT is a means for both advancing commercial and humanitarian objectives.

For Scientists

• Colleagues and collaborators from many foreign nations will have valuable products and processes that can accelerate your research program’s productivity and success. However, many of these advances are patented. Work closely, therefore, with your technology transfer office to identify useful technologies and to build partnerships in innovation and technology transfer. Patenting, technology transfer, and licensing will be an integral aspect of such partnerships, and international considerations will play a key role.
• Your institution’s technology transfer manager will need your input in order to make strategic decisions concerning where to pursue foreign patent applications in the national phase of the PCT timeline. You likely know where competitors are located and where products arising from your research are needed.
• Try to include a line item in your budgets that cover patent application filings when you submit research proposal for funding.

For Technology Transfer Officers

• Implement a strategic plan for managing your patent portfolios from an international perspective.
• Realize the potential advantages of regional and international (such as under the Patent Cooperation Treaty [PCT]) patent application filings.
• Provide your institution’s scientists and staff with training on how to handle inventions and innovations in order to fully capture the value of their IP rights.
• Work towards building dynamic partnerships with foreign owners of key technologies. Encourage these entities to file PCT patent applications and to pursue national stage applications in your country. This will create greater licensing and technology transfer partnerships opportunities.
• Building PCT capacity in the technology transfer office is a key investment. Sound PCT practice will greatly facilitate the realization of global opportunities. Encourage your institution’s administration to invest in training and capacity building in PCT practice.
• The PCT provides you with time flexibility to consider whether, and where, to seek patent protection for subsequent commercial activities or humanitarian initiatives.
• The PCT international search report and written opinion can be of considerable value for guiding early decisions regarding whether or not to proceed prosecuting the patent application. It is a sound early indication of the likelihood that a patent application will be successful and that a patent will issue based on the claims as filed.
• If your country’s government patent office is still in the early stages of being set up, with limited capacity and resources, then the PCT will be an ideal way to assist the office with patent examinations. For example, examiners can rely on, and seek guidance from, the PCT international preliminary reports on patentability.