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The use of the Patent Cooperation Treaty (PCT) as a strategic mechanism for the internationalization of patent applications

By: Victor Fachim, Arthur Lourenço

May 16, 2023

Among the numerous peculiarities of the patent system, the Principle of Territoriality stands out.

In general, this Principle establishes that a patent generates, for its holder, “patent protection effects”, in other words, exclusive privileges or temporary rights to exclude third parties over certain technology, only in territories where the patent application was filed and subsequently the patent was granted.

The ramifications of this Principle are vast, and one of the most interesting is the fact that the same technology can be under the “patent protection effects” in certain territories and, simultaneously, such technology can be considered as belonging to the Public Domain in several other territories (legal situation in which an inventor does not hold exclusive rights over his creation and, therefore, his technology can be reproduced and exploited by any interested party without the need for any type of authorization).

The Principle of Territoriality, therefore, brings with it the essence of the patent system, that is, the exclusive privilege as opposed to the Public Domain.

What determines the difference between these two scenarios is the internationalization strategy of the patent application adopted by its applicant. In territories where the patent application has been internationalized, there is an expectation of obtaining “patent protection effects”, on the other hand, in regions where the patent application has not been filed – or the equivalent expression of will by its holder, in cases, for example, of validations in European countries after concession by the regional body EPO – the technology now belongs to the Public Domain.

Thus, for a technology to be subject to “patent protection effects” in different territories, patent applications must be filed locally and in line with the legal deadlines established in treaties, conventions, international agreements on patents, and local legislation, in each of the territories of interest of the developers of said technology.

Therefore, the Principle of Territoriality also enshrines respect for the sovereignty of each country, to the extent that, observing the minimum rules of international agreements and treaties, they have the independence to decide on the granting of a patent (see art. 4 bis of CUP).

It is important to note that multiple filings do not need to be carried out simultaneously in all territories of interest, as there are two main ways of internationalizing a patent application.

The first way of internationalization, determined under the terms of the Paris Union Convention (CUP), makes it possible for a first application (normally filed in the technology developer’s country of origin) to be internationalized through individualized filings in each of the territories of interest of the holder claiming unionist priority for the first filing. All these filings must be made in CUP signatory countries[1] within 12 months from the filing date of the priority application.

The second way of internationalizing a patent application, determined under the terms of the Patent Cooperation Treaty (PCT), allows a first patent application (also normally filed in the country of origin of the technology developer) to be internationalized through the filing of an “international” patent application and subsequent filings of multiple “national” applications. The “international” filing, or simply the PCT filing, must be made within 12 months from the filing date of the first patent application, and the “national” filings must be made between 30 or 31 months (depending on the territory of interest) counted from the filing date of the first patent application[2]. It is important to highlight that the “international” patent application is only a transitory application and, consequently, does not generate any “patent protection effect” itself. It is a tool that guarantees the right to extend exclusive protection to other territories, mainly to gain time so that the technology holder can elaborate his investment strategy and exploitation of the asset.

Of course, these ways are not mutually exclusive and can be combined if necessary.

In the two ways of internationalization of a patent application presented, the first decision of the applicant – to make individual filings via CUP or to make the “international” filing via PCT – must be taken within 12 months. Keeping in mind that in this period the first patent application is still in the secrecy phase and, therefore, has not yet been technically examined by the responsible body (in the case of Brazil, the INPI), the applicant’s first decision usually involves high doses of pragmatism, after all, such a decision is usually taken without any indicator on the patentability or non-patentability of the invention.

And it is precisely in this context that the second way of internationalization – the Patent Cooperation Treaty (PCT) – can be used as a strategic mechanism for extending protection to other countries.

In the first aspect, the processing of the “international” application – commonly referred to as the processing of the PCT – includes the issuance of at least one technical opinion on the patentability of the invention. This opinion, issued by the authority responsible for the search, aims to anticipate the results of the technical examinations that patent applications will be submitted in the future. Based on this opinion, the applicant now has at least one indicator of the patentability of the invention and, with that, he can act strategically based on a more predictable scenario.

Here it is worth highlighting another relevant point in the elaboration of the strategy: the choice of the authority responsible for the search (ISA). In the case of Brazilian applicants for “international” applications, the eligible authorities in addition to the INPI are AT (Austrian Patent Office), EP (European Patent Office – EPO), SE (Swedish Patent Office), and US (American Patent and Trademark Office – USPTO). The experience and tradition of certain search authorities with certain fields of science and technology can be decisive for the success in obtaining the “patent protection effect” in the countries of interest.

In a second aspect, there doesn’t need to be a first local patent application for an “international” application to be filed. The PCT filing itself may be the first patent application. The timeframe for counting the term for “domestic” fillings (in general, 30 or 31 months from the date of the filing of the first patent application) becomes the filing date of the “international” patent application itself.

Whichever way is chosen for the internationalization of a patent application and consequent exclusive protection abroad, it must be evaluated according to the particular objectives of the interested party, as both ways have advantages and disadvantages when in a direct comparison. However, it is very important to point out that a few territories, especially territories located in South America, are not part of the Patent Cooperation Treaty (PCT), and, therefore, patent applications cannot be internationalized for these territories through the aforementioned second way. In these territories, the internationalization of patent applications must obligatorily be carried out first.

The map below shows details for the internationalization of patent applications in territories where ClarkeModet has a presence and direct operation.

TerritoryCUPPCTPCT Months
ArgentinaYes NoN/A
South KoreaYesYes31
Dominican RepublicYesYes30
European UnionYesYes31

The internationalization of patent applications, regardless of the internationalization way, to exercise “patent protection effects” or to seek licensing agreements for protected technology, is essential to leverage the business of multinational companies and increase the strategic presence of national companies in new future markets.

One of ClarkeModet’s main goals is to facilitate the management of the patent portfolio of national and multinational companies in Brazil and abroad through its local offices or its accredited network of correspondent agents.

Therefore, if your company has patent applications that need to be internationalized, there is certainly great synergy between your needs and ClarkeModet’s objectives.

Thus, ClarkeModet invites you to learn more about its structure, experience, and fees for this type of operation.

[1] 179 member countries (see https://www.wipo.int/wipolex/en/treaties/ShowResults?search_what=C&treaty_id=2; consulted on May 03, 2023)

[2] Some countries have special deadlines subject to certain conditions, such as China and Turkey, for example, 32 and 33 months, respectively.

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