Nature of an International Application
A patent application is a PCT application if it is filed under the PCT (A2.vii PCT).
This « international » patent application may be filed in any Contracting State (A3.1 PCT).
Purpose of an International Application
A PCT application must seek protection for an invention with a view to obtaining (A2.i PCT and A2.ii PCT):
- a patent, an inventor’s certificate (additional or not), a utility certificate (additional or not), a utility model, or an additional patent or certificate.
Protection for another form of industrial property right is therefore not possible (e.g., designs).
Effects of an International Application
Regular National Filing
Principle
The filing of an international application has the same effects as those of a regular national filing (A11.3 PCT) in each designated State.
This becomes effective once a filing date is validly accorded.
Exception
However, this principle has an exception: the entry of the international application into the prior art (A64.4 PCT).
Indeed, a State may declare that the filing outside its territory of an international application designating it does not allow that document to enter the prior art as of the filing date.
For this to apply, the legislation of that State must (A64.4 PCT):
- recognize that a patent may enter the prior art before publication, without considering that this entry into the prior art occurs as of the priority date.
This exception applied to the United States (Applicant’s Guide, National Chapter, US, points US.22 and US.23). An international application enters the prior art in the USA:
- if the international application was filed before November 29, 2000:
- when the application is published, or
- when the applicant has completed all of the following:
- paid the basic national official fee,
- provided a copy of the international application,
- provided, where applicable, the translation of the international application and provided the inventor’s oath or declaration.
- if the international application was filed on or after November 29, 2000, but before March 16, 2013:
- when the application is published, if the application is not published in English;
- as of the filing date of the international application, if the application is published in English and designates the USA (automatically the case since January 1, 2004).
- if the international application was filed on or after March 16, 2013:
- as of the priority date of the international application, without any language condition (if it designates the USA, which has automatically been the case since January 1, 2004).
Effects under the Paris Convention
An application that has the effect of a « regular national filing » may be used to claim a priority under the Paris Convention (A11.4 PCT), even for a subsequent international application (A8.1 PCT in conjunction with A11.4 PCT).
Application Not Processed by National Offices
The filing of an international application suspends the procedure before national offices for that application: no national office may (unless agreed by the proprietor) process or examine the application before the expiration of a 30-month period from the priority date (A23.1 PCT and A40.1 PCT).
Thus, no official fee or translation may be required before the expiration of this 30-month period (A22.1 PCT).