Rights Conferred by the Application
Filing an international patent application under the Patent Cooperation Treaty (PCT) is the equivalent of filing a national application in all member states, upon condition that national extensions indicated below are opened within the given terms, as detailed in the following.
Download the list of member states of the Patent Cooperation Treaty from the web site of the World Intellectual Property Organization (WIPO).
It is possible to claim the priority of the first, prior patent application filed in one of the member states of the Paris Convention or World Trade Organization within 12 months running from the filing date of that first application. More than one priority is permitted, and in such a case the 12-month term runs from the earliest priority. A first application for an international patent can be the basis for a priority claim when subsequent applications are filed for the same invention in other states party to the Paris Convention.
Who May Apply for an International Patent
Any natural or legal person who is a national or resident of states party to the PCT, or who has a true and operative industrial or commercial enterprise in one of such states, may apply for an international patent.
Where to File the Application
Applications may be filed with the head offices of the WIPO in Geneva, with the Italian Patent and Trademark Office, with the patent office of a PCT member state or with the European Patent Office.
International Patent Application
Application for an international patent may be filed regardless of the existence of a prior national patent.
Official Languages of the International Patent Office
English, French, Spanish, German, Arab, Chinese, Japanese, Korean, Portuguese and Russian are the official languages to be used for the application. Upon filing the application, the text can be in any language, but a translation will be required subsequently.
Search and Examination
WIPO carries out a search on the novelty of the invention which is then made available to the applicant. The applicant can choose to request a preliminary international examination of the patent application. During the examination, it is possible to limit the application’s content.
The applicant for an international patent must prosecute the application in the specific states in which protection is sought, completing the actual filing of the international application in each of these states within 30 months of the filing (or priority) date. For some states and regions, the term can be longer.
In short, the PCT procedure enables the applicant to assess the patent’s value during the initial period of at least 30 months, and later to select the states of actual interest before starting the national patent phase.
As far as European states are concerned, in order to obtain an international PCT application in Belgium, France, Greece, Ireland, Monaco, The Netherlands and/or Slovenia it is necessary to file an application for a European regional phase designating the state(s) of interest, obtain the grant of the correspondent European patent and validate it.
For other states, including Italy, Spain, Germany and the United Kingdom, it is possible to open a national phase directly from the PCT application. For Italy, the direct route is available for international PCT applications filed as from 1 July 2020.
There are no annual fees for maintenance of an international application.
Applicable International Agreements
The Patent Cooperation Treaty (PCT), the Paris Convention and the Agreement with the European Patent Office.