HOW TO FILE A PCT PATENT

​The Patent Cooperation Treaty (PCT) is a multilateral treaty that allows one to obtain patent protection internationally of an invention. The request may be done simultaneously in multiple countries by filing one single request for international protection. The treaty is administrated by WIPO (World Intellectual Property Organization) and counts with more than 150 Contracting States, including Brazil.

1) Why International protection?

​The principle of territoriality applies in the international patent system. It means that one only has protection of an invention on the boundaries of the territory it applied for it. For one to protect an invention in multiple countries, there is need for an international protection.

2) What is the main advantage of requesting a PCT Patent?

​The PCT Patent system simplifies and cheapens the process of obtaining international patents when requested in multiple countries. With one unique application one may seek protection in multiple countries. After all the steps are accomplished, there is no need to apply for protection in each country one needs it.

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3) Who may request a PCT Patent?

​As mentioned above, the PCT is a multilateral treaty. Therefore, any person who has nationality or is resident in one of the member States of the Treaty may file a request for international patent protection of an invention.

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4) What are the steps to obtain a PCT Patent?

​The process to obtain a PCT Patent is divided in four main phases. Filing, International Search, International Publication and National Phase.

a) Filing

​As the Treaty is administrated by WIPO, the filing of an international application must be done with a national or regional patent Office or WIPO. This is when one claims priority of a determined invention. The request is done in only one language and there is a set of fees to be payed

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b) International Search

​In the second phase, the patent documents go through an “International Searching Authority” (ISA), who’s objective is to analyze technical requirements and establish a written opinion regarding the invention’s potential patentability.

c) International Publication

​The third step constitutes in the publication of the international application. In other words, after the successful passing of both phases mentioned above, the content of the application for protection of an invention is disclosed to the world. This happens after the expiration of 18 months from the earliest filing date.

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d) National Phase

​The final obligatory step is the national phase. It happens by the end of the PCT procedure, usually 30 months from the earliest filing date of the initial application. In this phase, one may start to pursue the granting of the patents directly before the national patents Offices of the countries in which one wants to obtain them.

The phases mentioned above may be analyzed more clearly on the flowchart provided by the WIPO website which is reproduced below:

5) Can the PCT applications be filed electronically?

​Since October 2014, it is possible to file PCT applications electronically. The ePCT is a WIPO online service that allows applicants to request international protection and to submit documents or online requirements. One of the advantages that is leading most applicants to choose the electronical filing is the certain PCT fee reductions. More details about PCT electronic filing can be found at www.wipo.int/pct-safe/en/.

6) How does the Brazilian PCT national phase work?

​In order to obtain a PCT patent in Brazil, one must firstly accomplish all the steps mentioned in item 3. The filing of the application must be done in a national or regional patent Office or the International Bureau of WIPO; the documents must go through international authorities who will issue a written opinion and transmit reports back to WIPO; finally, the content of the application will be internationally published. In order to enter the national phase in Brazil, a few facts must be taken into account:

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1. The INPI – Instituto Nacional da Propriedade Industrial is the institution responsible for receiving the requests of the applicants for protection in Brazil. More information of the national phase in Brazil may be found in http://www.inpi.gov.br/english
2. The national phase in Brazil is regulated by the Resolution 77/2013 of the INPI;
3.  There is a 30 month time limit for entering with the PCT national phase. The time limit starts running from the date of priority (first filing). This deadline may be restored by the term of 60 days if legitimate reasons are provided;
4. For filing a patent in Brazil, the requirements are the information regarding applicants and inventors and the patent claim must be in Portuguese;
5. The patent may be filed in a foreign language, however, the term of submission of the Portuguese translation is 60 days from the national phase entry;
6. To perform the PCT national stage entry in Brazil, foreigners should appoint an agent, a registered Brazilian patent attorney;
7. If the applicant is not the author of the invention, it is advisable to file an Inventor’s Authorization. It may be submitted after entering the PCT national phase in Brazil;

7) What are the costs to file a PCT Patent?

​In order to file a PCT Patent, there are four types of fees. The transmittal and international filing fees; the search fees; the supplementary search fees and the preliminary search fees. The amount varies from each Contracting State.
The PCT Fee Table, issued each year, discloses the amount due for each country. The one from 2017, published on 22/12/2017, may be found at http://www.wipo.int/export/sites/www/pct/en/fees.pdf
Whether if it is for the request for international protection or for the entry in the national phase in Brazil, the fees from the INPI may be found at http://www.inpi.gov.br/menu-servicos/patente/arquivos/tabela-de-retribuicao-de-servicos-de-patentes-inpi-20170606.pdf

8) Further information

​If you are considering filing for a PCT patent in Brazil, we also recommend that you check our guide for:
– How to incorporate a company in Brazil
– How to register and protect a trademark in Brazil
– How to transfer technology in Brazil
– How to register and protect a patent in Brazil

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SOURCES
http://www.inpi.gov.br/menu-servicos/patente/pct
https://www.ip-coster.com/IPGuides/pct-brazil
http://www.wipo.int/pct/en/faqs/faqs.html