An international application filed under the PCT makes it possible to file patent applications at a later stage. In other words, an applicant can file a patent application in one specific target country, and before the end of the year from the filing date, can file a PCT application, which extends the period for filing individual applications in each country by approximately a year and a half, and sometimes more.
That is, from the first filing date, which can be, for example, a provisional application, a patent application or the PCT application itself, the applicant will file patent registration applications in the target countries in which he wishes to protect his invention, and will ask for the first priority date to be recognized in each country in which he files a patent application by virtue of the PCT.
For example, John Doe files an application in Israel, and before 12 months have passed, files the PCT application, and his competitor files a patent registration application in the USA, for example, during the following year. Still, if John Doe files his application in the USA before 30 months have passed from the date of the Israeli application, he will be granted a registered patent in the USA, provided he meets the conditions of the patent law, rather than the applicant who actually filed before him in the USA.
PCT or a Patent at the Various Patent Authorities
Patent applications are filed with the various patent authorities. For example, an Israeli application will be filed with the Israel Patent Office, a US patent application will be filed with the US Patent Office, an Australian patent application will be filed with the Australian Patent Office, and so on. However, an application under the PCT cannot be filed in every country, but only with patent authorities that have been authorized to do so.
Certain patent authorities around the world have been authorized to act as an International Searching Authority under the PCT. Israelis today usually file an international application through the Israeli examining authority, which has been authorized to examine applications under the PCT.
The advantage is that the substantive examiner is Israeli, sits in Jerusalem, and it is relatively easy to talk and communicate with him. However, it is sometimes worthwhile to file an application so that the examiner will be, for example, from the European or US examining authority. For example, for an inventor who intends to file a patent in Europe, there is an advantage in the international examiner also being European. But of course there is no such obligation.
The disadvantage of examination in Europe and the USA, in addition to the communication difficulties compared to Israel, is the sometimes higher fee, which depends on the characteristics of the applicant.
It is important to remember that an application under the PCT does not constitute a registered patent, and therefore it is not possible to sue an alleged infringer of an invention that is at the PCT stage, unless a registered patent is granted in the target country in which the infringement takes place.
There are complex legal considerations regarding the legal disadvantages and advantages, alongside the commercial ones, of filing an international application under the PCT, which we consider individually with each and every inventor before deciding whether or not to file an application under the PCT.
The above information is partial and incomplete, and each case must be examined specifically. For more details, call: +972-3-9711013.