In this ‘Patent Application Series,’ I’ll be discussing both the utility patent application and the Patent Cooperation Treaty (PCT) application. I’ll explain what they are, what to know before filing either, and why they are important tools for the protection of an invention.
WHAT A UTILITY PATENT APPLICATION IS:
A utility patent application, as the name implies, is a patent application that protects an invention with utility, i.e. a useful function. A utility patent application must undergo examination (patent prosecution) and ultimately must be allowed by a USPTO patent examiner before the application can be issued as a utility patent.
There are specific requirements that must be met for a utility patent application filing to be accepted and for the invention itself to qualify for protection. The utility patent application filing requirements are defined by the USPTO. In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter. Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.
What a Patent Cooperation Treaty (PCT) Application is:
A Patent Cooperation Treaty (PCT) application is a type of patent application filed to protect a design or utility invention internationally and usually in a least three countries. The Patent Cooperation Treaty itself is a treaty between over 150 Contracting States, i.e. countries. This treaty allows an inventor in any of the Contracting States to file one PCT application to seek protection in any of the individual countries that are part of the treaty.
A PCT application is also called an international patent application. These names may seem deceiving, as a PCT application does not itself become an issued international patent or PCT patent (these don’t exist). Instead, a PCT application is used as a timebridge between its filing and the expensive step of filing national and/or regional patent applications in individual countries.
There are specific requirements that must be met for a PCT application filing to be accepted and for the invention itself to qualify for protection. The PCT application filing requirements are defined by the World Intellectual Property Office (WIPO). WIPO administers the PCT and is responsible for much of the PCT process, including performing a formality examination. The United States Patent and Trademark Office (USPTO) acts a Receiving Office for PCT applications and also offers information on the PCT process.
WHAT TO KNOW BEFORE FILING:
Filing a utility or PCT application, as with all patent applications, does not guarantee a patent will be issued on the invention as it was filed. In most cases, when the patent is finally allowed, the issued patent differs greatly from the application as it was initially filed. All of the changes that the application undergoes to become a patent worthy of issuance take place during patent prosecution. The patent process is a long one and does not always end with an issued patent.
The first step in the process for either type of patent application is to file the application. The utility application is filed with the USPTO as a matter of course. The PCT application, however, can be filed directly with WIPO or with the USPTO as a Receiving Office. Once filed, either type of application will be reviewed for its adherence to the filing-formalities required by the patent office. The requirements for the PCT application are governed by WIPO. This review takes place during the pre-examination phase.
After an application passes the pre-examination phase, it is placed in a que with other patent applications to await formal examination and publication.
The utility application will be examined by a USPTO patent examiner. For the PCT application, a PCT international search is performed by an International Searching Authority (ISA). During examination, the as-filed invention is compared to the available prior art in order to determine if the invention itself is new, novel, and non-obvious. Both types of applications are set to be published approximately 18-months after the application is filed, or 18-months from the application’s earliest priority date. After publication, the application is made available to the public. The utility application will be published on the USPTO publication database. The PCT application will be published with the examination results on the WIPO publication database http://www.wipo.int/publications/en/
For PCT applications, the publication concludes the international phase and the PCT application enters the national phase. The national phase is the processes of submitting the PCT application to the individual PCT Contracting States (countries) in which protection is sought. The deadline for entering the national phase, in the majority of countries, is at 30 months from the PCT filing date or from its priority date. Once the national phase is entered, the individual countries will request annual maintenance fees to maintain the application. The PCT application must ultimately be examined and approved by a country’s national patent office to receive protection in that specific country. Various maintenance fees are required and are governed by the individual country.
For utility applications, if the application is approved by the patent examiner, examination will be closed, and the patent will be allowed. With allowance, an issue fee is due before the application can be officially issued as a patent. The issued patent must then be maintained with the payment of a maintenance fee to the USPTO at intervals of 3.5, 7.5, and 11.5 years judged from the date the patent was issued. If the maintenance fees are not paid, the patent will expire and the rights it provided will be lost. If all maintenance fees are paid, patent protection will last for 20-years from the date the patent application was filed.
It is important to understand that any type of issued patent does not grant the patent owner the right to make, use, or sell the patented invention. A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability. Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.
WHY A NONPROVISIONAL UTILITY PATENT APPLICATION IS AN IMPORTANT TOOL:
The utility patent application and PCT application are important tools, because the resulting patents are important. All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, utility and PCT patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a utility, PCT or other patent applications.