GAINING VALUE THROUGH THE PCT PROCESS

Most of our clients file their overseas patent applications via the PCT (Patent Cooperation Treaty) process. There are many good reasons for this - one of the more important being that the centralised examination process can cut costs and reduce objections when applications are filed in individual countries.

When a PCT application is filed, the PCT examiner conducts a search of prior art and provides a report listing any publications that are relevant to your invention. Analysis of this report can give a good indication as to the patentability of your invention. Following the search, applicants have the option of entering into a dialogue with the examiner and making amendments to their application - hopefully resulting in a favourable examination report being issued by the PCT examiner.

What are the main advantages of seeking a favourable examination report?

• To save a considerable amount of money: if outstanding issues can be resolved during the international examination, they may not need to be addressed later on a country by country basis. Overseas associates are not cheap and anything that can be done to avoid replicating charges is desirable.
• To convince potential investors the invention is considered patentable by an independent authority: a favourable report generally carries more weight with an investor than any representations from the patent applicant.
• To help decide whether or not to file national phase applications: if a favourable examination report cannot be gained, it is an indication that patent protection could be weak.

When might you not want to respond to the examiner's report?

• If the invention is inherently weak it may be useful to have broad claims that act as a deterrent to other parties and prolong the examination process. However, this is of limited use if potential competitors / partners are IP savvy, as they would have their own attorneys conduct an equivalent analysis to that of the PCT examiner.
• If the cited prior art has different relevance in different countries - for example cited documents may have been published within the US grace period and therefore not be relevant to the US application. This is something that we are highly conscious of and always review the relevant dates before suggesting any potential narrowing of the claims.
• If there is no further money for the project and the PCT application is in a holding pattern.

To help decide what the best approach for a particular situation is, talk to an intellectual property adviser when planning your initial filing strategy.

By Kate Wilson, Partner