Figure I10

Example PCT timeline.

offices that may be used as receiving offices, there is an International Bureau of the World Intellectual Property Organization located in Geneva that may accept applications from any applicant who is a national or resident of a PCT country. The International Bureau also provides a number of other support functions in administering the PCT and receives a copy of all the applications filed with any of the receiving offices, acting as the body that maintains the master files. For instance, the International Bureau is responsible for publishing the application at the appropriate time and acts as a general coordinating body for all PCT applications.

All applications filed under the PCT are subject to an international search by one of the patent offices acting in its capacity as an "international searching authority." Such a search is similar to the search that would be performed by that patent office when searching for prior art. An international search report is issued identifying particular references according to their perceived relevance to the patentability of the claims, and is transmitted to the applicants with a written opinion. An opportunity is provided at this stage of the process for the applicants to take any of a number of different actions, including withdrawing the application or amending the claims in light of the references uncovered by the search. As long as the application is not withdrawn, the application is published by the International Bureau with the international search report (but not with the written opinion). If the claims are amended, a second written opinion may sometimes also be issued.

In addition to receiving a written opinion based on search results, it is possible to have an examination of the application performed by an international preliminary examination authority. Such an examination is only performed upon the filing of a special demand for such examination and the payment of an additional fee. Such an examination can be of value because the results of the examination may be accepted by many of the patent offices around the world when the PCT application enters the national phase and is filed in individual countries. It should be noted, though, that not every country in the world accepts the international preliminary examination report, with those countries that have relatively sophisticated patent offices being generally less likely to accept the results of examination by a different examination authority.

Examination of the application during the PCT process affords another opportunity for amending the claims prior to entry into the national phase. Between the search and examination, there are thus multiple opportunities to consider prior art found by a patent office and to put the claims in better condition for allowance. In cases where an application is likely to be filed in many countries, this type of consolidation of at least much of the search and examination can be particularly valuable. The claims can be cast into a form that addresses all the issues raised by the search and examination, making it ripe for an easy allowance in those countries that defer to the examination of the examination authority.

Once these procedures have been completed, the application is ready for entry into the national phase. This is the point in the process at which the consolidation provided by the PCT is completed. The application is then filed within each country of interest according to the specific criteria for that country. In some respects, this last statement is not entirely accurate in that there are certain parts of the world where another level of consolidation may be used. Undoubtedly the most commercially important of these is Europe, in which the European Patent Office will examine an application on behalf of all member states. In this instance, it is not necessary to have a separate examination performed in the German, French, and Spanish patent offices when patents are desired in those countries. Instead, a common examination is carried out by the European Patent Office, requiring only an administrative validation procedure after the application has been allowed to bring patents into force in the identified countries.

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