Technology can be a major asset for businesses entering international markets. Without appropriate protection, it may be exposed to imitation or disputes abroad.
Because of this, many companies have been reviewing overseas patent strategies since the domestic patent application phase, and PCT international applications are being used as an important means in the process.
In this article, we’ll look at what PCT international applications are, what procedures are in place, and why many companies choose to apply for PCT as the starting point for their overseas patent strategy.
Why an overseas patent strategy matters for expanding businesses
In the foreign market, it is difficult to gain a competitive advantage only by technology. Especially in a technology-based industry, a certain level of technology is required, so it is important to ensure that you have the right to protect it legally.
Patents are not just a means of protecting technology. It is utilized as an important indicator of the competitiveness and business value of companies in the process of negotiating with foreign partners, transferring technologies, licensing contracts, and attracting investments.
Moreover, in foreign markets, patent disputes occur more frequently than in the country, so securing the rights is much more important than a post-response. If you run a business without a patent in a major market, there is the possibility that market entry itself will be limited or you will face unexpected disputes.
Therefore, if you are planning to enter overseas, it is necessary to establish an overseas patent strategy from the early stage and prepare it systematically.
What is a PCT international application?
The Patent Cooperation Treaty (PCT) provides a route to seek patent protection in multiple contracting states through one international application.
PCT is under the control of the World Intellectual Property Organization (WIPO), and a number of key countries participate as members. Applicants will be able to take the first step towards securing their overseas patent through one application, and will then be subject to individual review by selecting the required country.
However, the PCT application is not a system that directly registers the international patent, as is often misunderstood. The PCT application does not create a patent right abroad, and it is ultimately decided whether the patent application in each country is registered after a separate examination.
In other words, it is correct to understand that the PCT is not an overseas patent registration scheme but an international application process for efficiently preparing foreign patent strategies.
PCT International Application Process
The PCT procedure has an international phase and a national or regional phase.
1. International phase
The applicant will submit one international application to secure the application date for the entire PCT member country.
The International Searching Authority (ISA) conducts a prior-art search and issues an international search report (ISR) and a written opinion.
The results of international searches allow applicants to objectively examine how competitive their technology is in terms of novelty, inventive steps, and more. It is also possible to modify the scope of claims as needed or to adjust the country-specific application strategy in the future.
International publication normally takes place shortly after 18 months from the priority date.
The applicant may also request international preliminary examination to obtain a further assessment, including of amended claims.
2. National phase
The applicant must enter the national or regional phase within the deadline set by each office, generally 30 months from the priority date; some offices allow 31 months or other periods.
In the national phase, the process of submission of translations by country, payment of official fees, selection of local agents, etc. are carried out independently according to national patent laws.
The final patent registration will be determined after the grounds for refusal notification, submission of comments, and correction process.
Why Companies Choose PCT Applications
There are three main reasons why working companies review PCT applications.
- If the foreign country is not yet confirmed
While many companies review several countries at the same time, such as the US, Europe and China, the actual market may vary depending on the progress of the business.
The PCT route gives the applicant more time to assess markets and business plans before committing to national or regional phase entry.
- If you want to reduce the cost of your initial overseas application
Individual applications abroad will incur translation fees, official fees, and local agent fees per country.
PCT applications, on the other hand, can delay spending on these costs, which is beneficial in terms of funding operations. For start-ups and small businesses in particular, it has the advantage of being able to design overseas patent strategies in line with the growth phase of their business.
- If you want to check the overseas patent of the technology first
The international search report and written opinion provide useful assessments of patentability against the prior art.
This allows applicants to review in advance whether their technology is likely to be recognized as a patent abroad, reducing unnecessary entry into the country and developing strategies to focus on key markets.
A PCT application is more than a filing formality.
It is a strategic system that helps to secure the filing date for major countries abroad, examine patent possibilities through international searches, and establish national entry strategies in line with business plans and market conditions.
A PCT application can be useful when target markets are not yet settled or when a business wants to manage early costs while building an international portfolio.
In order to reliably protect the competitiveness of technology in the overseas market, it is important to not only secure the domestic patent, but also to prepare the overseas patent strategy from a long-term perspective. The PCT international application may be the first step in this global patent strategy.
This article reflects the information available when it was published. Contact us to discuss your circumstances.