International Applications for Russian Inventors: A Quick Guide to the PCT Procedure

What is the PCT and why is it needed?

The PCT (Patent Cooperation Treaty) is an international treaty administered by the World Intellectual Property Organization (WIPO) that simplifies the process of filing patent applications in several countries. Instead of filing separate applications in each country, the applicant may file a single international application, which can then be used to file applications with national and/or regional Offices in order to obtain patent protection in more than 150 Member States.

For Russian inventors, the PCT is especially important, because:

• It allows you to distribute significant patenting costs in different countries over time.
• Allows time to assess the commercial potential of the invention.
• Provides access to international search and examination.
• Simplifies the management of applications in multiple jurisdictions.

Key steps of the PCT procedure

1. Preparation and filing of an international application

The preparation of the application includes a detailed description of the invention, in which analogues are analyzed and the shortcomings of existing solutions are identified, as well as the execution of the claimed subject matter is disclosed in detail in examples and drawings. When preparing the application materials, special attention should be paid to the drafting of the claims, which determine the legal scope of protection.

The prepared application can be filed through the Federal Service for Intellectual Property (Rospatent) or directly with the International Bureau of WIPO.

Important points for the Russian applicant at this stage:

1. The filing date of the international application is considered the priority date for all participating countries.
2. Filing an application under the PCT does not automatically mean obtaining a patent - it is the beginning of an international procedure.
3. Deadlines: the application must be submitted within a period of no later than 12 months from the date of the first national application (if any).
4. If the applicant missed the 12-month deadline and did not apply, in some countries it is possible to reinstate the missed deadline within 2 months. However, this possibility depends on the legislation of a particular state and may require supporting documents justifying a valid reason for the absence (illness, force majeure, etc.).

2. International search

Within 3-4 months after filing the application, an international search is carried out by an authorized International Searching Authority (ISA) (the Russian applicant can choose an ISA from the list of authorized bodies (Rospatent, EPO, USPTO, JPO, etc.)).

The ISA searches for analogues and assesses the compliance of the claimed technical solution with the requirements of the unity of invention, the patentability conditions of "novelty", "inventive step" and "industrial applicability". This is necessary so that the applicant can understand the chances of obtaining a patent before the start of the expensive national phase, and, if necessary, make changes to the claims of the invention taking into account the received international search report (ISR).

Time frame for the search: The international search report is sent to the applicant within 3 to 6 months from the filing date or from the date of commencement of the international phase.

Upon receipt of the ISR, the applicant may amend the claims under Article 19 of the PCT (This amendment shall be made once and filed with the International Bureau; the time limit for filing amendments under Article 19 of the PCT shall be two months from the date of dispatch of the international search report by the International Searching Authority or 16 months from the priority date, whichever is later) or amend the claims and/or the description of the invention (including sequence listings, which are part of the description) and/or drawings under Article 34 (Modifications under Article 34 of the PCT must be filed with the International Preliminary Examining Authority (IPEA). They may be submitted at the same time as the request for international preliminary examination, or before the expiry of the time limit for filing the request for international preliminary examination, or before the preparation of the international preliminary examination report. submitted by the applicant several times during this period), file an objection (if he does not agree with the conclusions).

3. Publication of the international application

18 months after the priority date, the application is published in the WIPO database. Publication makes the content of the application publicly available, which informs potential partners and competitors. Publication of the application materials does not mean the grant of a patent, but fixes the date of disclosure of the invention. The publication of an international application will prevent patents for identical technical solutions from being obtained by third parties in any countries that filed an application later. If it is necessary to enter the national or regional phases earlier, it is possible to publish the international application early at the request of the applicant. There is no duty.

4. International preliminary examination (optional)

The applicant can request an international preliminary examination, which gives a more in-depth analysis of patentability. This helps to improve the application before entering the national phase.

5. National (regional) phase

Within 30 or 31 months from the priority date, the applicant must file an application with the patent offices of the selected countries. At this stage, the application is examined in accordance with the national legislation in the selected country (or regional office, for example, the European Patent Office). If the application satisfies the requirements, a national or regional patent is granted.

Tips for Russian inventors

Choosing the right date of submission

• If the invention is first claimed in Russia, the filing date of the national application will be the priority date.
• Within 12 + 2 months during the period of inadvertent omission, it is possible to file an international application under the PCT with the priority date maintained.
• If you file an international application immediately, the priority date will be equal to the PCT filing date.

Submission Language and Translations

• The application for the Russian applicant can be submitted in Russian or English, but for the national phases, a translation into the official language of each specifically selected country will be required.
• Translation is a significant expense, so you need to plan your budget carefully.

Cooperation with a patent attorney

• A patent attorney will help you competently draw up an application, recommend a strategy for choosing countries for transferring an international application to the national/regional phases, prepare translations and other documents.
• He will analyze the international search report and prepare for the international preliminary examination.

Managing deadlines

• It is very important to strictly comply with all deadlines - submission to the national/regional phases, sending responses to requests for examinations, payment of fees. In some countries, in addition to the fees for filing and examining the substantive application, there are also fees for maintaining applications for inventions in force.
• Violation of the terms may lead to the loss of rights to the patent.

Indicative timeline for filing a PCT application

The PCT procedure is a powerful tool for Russian inventors to obtain international patent protection in an efficient and cost-effective manner. Understanding all stages of the procedure, careful adherence to deadlines and professional support significantly increase the chances of successful patenting.

If you are planning to apply for international patenting, it is recommended to:

• Consult with patent attorneys.
• Prepare documents carefully.
• First, file the initial Russian application – this will give "priority", allow you to get a preliminary understanding of the patentability of the technical solution and save money.
• Plan the timeline and budget for the transition to national/regional phases and select countries for further patenting in advance.
• Use international search and examination to assess the prospects and choose a patenting strategy, for example, in case of non-compliance of a technical solution with the "inventive step" patentability criterion, it is possible to consider countries where the object of patenting is a utility model that requires only compliance with the patentability criterion "novelty".