Nature of an international application
A patent application is a PCT application if it is filed with reference to the PCT (A2.vii PCT).
This "international" patent application may be filed in any Contracting State (A3.1 PCT).
Subject of an international application
- a patent of invention,
- an inventor's certificate (additional or not),
- a utility certificate (additional or not),
- a utility model,
- a patent or certificate of addition.
The application for protection for another form of industrial property right is therefore not possible (eg designs).
Effects of an international application
Regular national deposit
The filing of an international application has the same effects than those of a regular national deposit (A11.3 PCT) in each of the designated states.
This becomes effective when a deposit date is validly assigned.
Nevertheless, this principle has an exception: the entry into the state of the art of the international application (A64.4 PCT).
A State may declare that the deposit outside its territory of an international application designating it does not allow that document to enter the state of the art at the filing date.
For that purpose, the legislation of that State must (A64.4 PCT):
- recognize that a patent can enter the state of the art before publication,
- without considering that this entry in the state of the art is made on the priority date.
This exception was applicable in the United States (Applicant Guide, National Chapter, USpoint US.22 and US.23). An international application enters the state of the art in the USA:
- if the international application has been filed before 29 November 2000 :
- when the application is published, or
- where the applicant has performed all of the following actions:
- paid the basic national tax,
- provided a copy of the international application,
- provided, where appropriate, the translation of the international application
- provided the oath or declaration of the inventor.
- if the international application has been filed from 29 November 2000, but before March 16, 2013 :
- when the application is published, if the application is not published in English;
- at the date of filing of the international application, if the application is published in English and if it designates the USA (necessarily the case since 1 January 2004).
- if the international application has been filed from the March 16, 2013:
- on the priority date of the international application, without any language requirement (if it designates the USA, but this is necessarily the case since 1 January 2004).
Effects within the meaning of UPC
An application that has the effect of a "regular national filing" may be invoked to claim a priority within the meaning of the CUP (A11.4 PCT) even in the context of a subsequent international application (A8.1 PCT together A11.4 PCT) .
Request not processed by National Offices
The filing of an international application suspends the proceedings before the national offices for this application: no national Office may (with the consent of the holder) process or examine the application before the expiry of 30 months from the date priority (A23.1 PCT and A40.1 PCT).
Thus, no tax or translation can be required before the expiry of this 30-month period (A22.1 PCT)