International Patent Application System (PCT)

Applicants who have already filed a national application or a European patent application have the opportunity to utilize a 12-month priority period within the International Patent Application System. During this time, the PCT application is examined as if it had been filed at the same time as the earlier patent application.

Filing a PCT Application

A PCT application can be filed with the Patent and Registration Office, the International Bureau, or a regional patent office such as the European Patent Office. In the application, the applicant can also claim priority based on a previous application for the same invention.

By default, all member states of the Patent Cooperation Treaty and regional patent systems are considered designated countries for the sought-after patent protection in the application, unless the applicant specifically limits the geographical scope of the desired protection in the application.

Processing of PCT Application

The compliance with the formal requirements of an international patent application under the PCT system is verified by the receiving patent office. Next, a filing date is granted to the application, and it is transmitted to the international bureau. The international bureau sends notifications of the application to the designated offices of the target countries and regional systems, along with a copy of the application to the novelty search authority.

The novelty search authority conducts a search for prior art and prepares a preliminary opinion on the application and the patentability of the claimed invention. The applicant receives the novelty search report and a written opinion approximately three months from the date the novelty search authority received the application, or nine months from the priority date if this period expires later.

The written opinion in the novelty search report includes an assessment of the novelty, inventive step, and industrial applicability of the invention. The international bureau publishes the application and the international preliminary examination report 18 months from the filing or priority date. Based on the international preliminary examination report, the applicant can choose to enter the national phase directly or request an international preliminary examination report from the chosen international preliminary examination authority.

Entering the national phase requires the applicant to submit the necessary documents and pay the required national fees to the patent offices of the target countries and regional systems within a period of 30-31 months from the filing or priority date, depending on the country. If the applicant enters the national phase, each national patent office dealing with the sought-after protection continues the examination according to its national procedure.

The national patent office may choose to conduct a novelty search for the technical solution claimed in the application, as the novelty search report is not binding on the national phase authorities.

Instead of entering the national phase, if the applicant requests an international preliminary examination, it must be done either within three months from the date mentioned in the novelty search report or within 22 months from the earliest priority date. The international preliminary examination is conducted by a examiner in the international preliminary examination authority, who prepares a preliminary opinion on the patentability of the invention.

After the international preliminary examination, the application proceeds to the national procedure, where the substantive requirements of the application are examined at the national level. In Finland, the national phase must be entered within 31 months from the filing or priority date, and the application fee must be paid within the same period.

Priority or Right of Priority

The right of priority allows an applicant to file an equivalent patent application within 12 months from the filing date of the first patent application and claim priority for that application. In practice, the right of priority enables the applicant to delay expanding the scope of patent protection to foreign countries for a period of 12 months from the initial filing date.

Requesting the Right of Priority

To request the right of priority, it is sufficient for the patent office to grant a filing date to the patent application. However, in subsequent applications, the right of priority can only be obtained for those parts of the invention that were also disclosed in the earlier patent application. The right of priority cannot be obtained for subject matter that has not been previously disclosed. Therefore, a high-quality first application plays a significant role in ensuring the validity of the right of priority.

Benefits of the Right of Priority

 For an applicant who has applied for a patent in their home country, the right of priority can provide several significant benefits. The applicant has more time to assess the patentability and commercial viability of the invention before pursuing patent protection abroad, and domestic disclosure of the invention is possible after the filing of the first application without creating a barrier to foreign patenting. Additionally, the novelty and inventive step of the invention are evaluated during the priority year as if the subsequent application had been filed at the same time as the first application.