about the pct

PCT is an international treaty with 157 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single international patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.

Once the mention of the grant is published in the Bulletin, the European patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers. This is the stage where Pintz & Partners LLC can help you with its online EP validation services. 

You only need to select those countries where you would like to validate your EPO-granted European patent. In some contracting states, the patent owner will have to file a translation of the specification in an official language of the national patent office. Depending on the relevant national law, the applicant may also have to pay fees to the national patent office. If you ask for our help in this stage, every necessary step will be handled by our highly experienced patent firm.

benefits OF THE PCT APPLICATION

• Single filing in one language

• Cost-effective

• Option to file in any of the Contracting States

• Simple online filing

• Win some extra time: instead of the 12-month period you have 30 months to figure out the next step

• Putting off the costs: the higher costs only occur when starting the national phase in the different patent offices, which means that during the international phase, you will be able to spend your funds on developing and commercializing your product.

• Focusing your energy on the target: patenting an invention takes time and means relatively high expenses. With PCT, you can divide your energy, and during the international phase focusing on the invention (development, marketing, sales, etc.) and if you succeed in the first 2,5 years, you can proceed with the national phase and focus on obtaining the patent protection.

• Centralized management: by entrusting Pintz & Partners, you can make sure that every step of your PCT application process is taken care of by a single IP firm, and is professionally managed.

how to start a pct application?

After having the results of a prior art search, ask your patent attorney or Pintz & Partners to draft your application with a professional set of claims.

Do not forget that the claims define, in technical terms, the extent of the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. As you can see, claims are the most important part of the whole application, and should be drafted very carefully. Also, do not forget that after filing, the subject-matter of an application cannot be extended beyond the content of the application as filed. Therefore, before applying for a patent it is highly recommended to seek legal advice from a patent attorney. Because otherwise, if you draft the claims yourself, and ask a patent attorney during the examination phase to help you amend the claims, he might not be able to save your application.

 You can file an international application directly, as a first application:

PCT process when filing within 12 months from the filing date of the first application. In this case, the due date of starting the national phase is 30 months from the priority day.

Filing
If your application is ready to be filed, the most simple way to file it, is online, to the International Bureau. You may also file your application with a national or regional patent Office. At filing, you also need to pay certain fees.

International Search
An International Searching Authority (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (prior art) that may have an influence on whether your invention is patentable and establishes a written opinion on your invention’s potential patentability.

International Publication
After the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world and can be found online.

Supplementary International Search (optional)
For an additional official fee and a specific request, another ISA identifies published documents that may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.

International Preliminary Examination (optional)
For an additional official fee and a specific request one of the ISAs at your request, carries out an additional patentability analysis, usually on an amended version of your application.

National Phase
After the end of the PCT procedure, usually at 30 months (31 months at the EPO) from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them. This process usually includes filing a translation of the international application and is taken care of by local agents.

pct national phase in europe

European patents are granted by the European Patent Office in a centralized and thus cost-effective and time-saving procedure conducted in either English, French or German, its three official languages.

The 39 contracting states are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

It makes sense to file a European patent application rather than a national application when protection is sought in at least four European countries. Read more about European patents here.

Do not forget to specify PCT application number and filing date in the order form, and choose Euro-PCT among application types.

pct national phase in hungary

In Hungary patents enjoy protection for 20 years from the international filing date. The maintenance is due from the first year, but only needs to be paid after the Hungarian publication. The publication of the Hungarian search report may follow the publication of the application. The substantive examination should be requested within 6 months after the publication of the search report. The application needs to be filed in Hungarian, within 31 months from the priority day. The Hungarian Intellectual Property Office applies a surcharge when the translation is filed later than 31 months.

We request for filing a PCT national phase the following:

• actual description, claims, abstract, drawings,

• PCT publication with the search report,

• Result of International Preliminary Examination, if any,

• previous variations of the claims, if any,

• English translation of the priority copies,

• signed Power of Attorney, without legalization.

For any urgent filing the number of the PCT publication is sufficient.

In Hungary you may also file a utility model when starting the national phase. Read about the benefits here.

Do not forget to specify your PCT application number and filing date in the order form.