PCT Application

Hence the initial transaction costs of submitting separate patent applications to each patent office are reduced and postponed. Moreover, the PCT provides at least 18 additional months on top of the 12 month priority period, in which applicants can explore the commercial potential of their product in various countries and decide where to seek patent protection. Payment of the fees and translation costs associated with national patent applications is thus delayed. The PCT is the main aspect of companies` patent strategies and is widely used by applicants to keep their options open for as long as possible.

Additionally, an international application (PCT application) shall be subject to international search resulting in an International Search Report with the relevant state of the art cited therein, as well as a Written Opinion of the International Search Authority on the patentability of the invention.  The results of the International Search Report make it possible for the applicant to evaluate the chances for the grant of national patents and commercial success of the invention, while the application is still pending in the international phase and the substantial costs are postponed until the national/regional phases. 

WHO CAN FILE A PCT APPLICATION?

PCT is a closed patent filing system, which practically means that only applicants who are residents, nationals or have a place of business in at least on of  all PCT contracting states may file international patent application. An international application may have several applicants, but at least one of them must be a resident of a PCT contracting state.

National law of each PCT contracting state prescribes the requirements that a PCT applicant be represented by a local agent or a patent attorney. Most of the countries do not require an agent or patent attorney for applicants resident in the state concerned. However, all PCT applicants are strongly advised to appoint an experienced patent attorney who can conduct the patent drafting, filing and prosecution of a PCT application in the most professional, legally binding and efficient way. EQE qualified European Patent Attorney is the best option for all applicants from EPC contracting states.

WHAT HAPPENS AFTER THE INTERNATIONAL PHASE?

The PCT application, however, does not lead to an “international patent”. Depending on the respective country, the applicant has to select national/regional patent offices of the countries or regions, where patent protection is finally desired, within 30 or 31 months after the priority date of the international application. This is the so-called “PCT National Phase”, which in fact is the phase of granting a patent for invention. Each selected national/ regional patent office then independently decides on the patentability of the international patent application in the respective country/region. Some countries also allow protection by utility model upon entry into national phase instead of the classic patent.

The entry into a national phase requires payment at the designated and elected offices of the prescribed national (regional) fees, submission of a translation of the international patent specification into the respective language, complying with all requirements under the national patent law in each desired country, as well as appointing national patent attorneys in each country to represent the applicants before the respective national patent offices.

WHEN AND HOW TO ENTER PCT NATIONAL PHASE IN BULGARIA?

For the purpose of entering a PCT national phase in Bulgaria, the applicant shall file the international application with the Bulgarian Patent Office (BPO) within thirty one (31) months from the filing date, or if priority has been claimed, then from the earliest priority date of the PCT application, pay all the respective fees under national law and translate the patent specification (the description and the claims) into Bulgarian language.

Under the Bulgarian Patent Law, the PCT applicants willing to enter Bulgarian PCT national phase, may seek protection for a national Bulgarian Patent and/or Utility model registration in Bulgaria in parallel with the national patent or instead it respectively.

Foreign applicants (not being Bulgarian nationals or companies) are obliged to appoint a qualified Bulgarian Patent Attorney to represent them in the national phase before the Bulgarian Patent Office (BPO). However, the Bulgarian applicants are also strongly recommended to hire an experienced Bulgarian Patent Attorney. 

WHEN AND HOW TO ENTER EURO-PCT PHASE BEFORE THE EUROPEAN PATENT OFFICE (EPO)?

For the purpose of entering a EURO-PCT phase, the applicant shall file the international application with the European Patent Office (EPO) within thirty one (31) months from the filing date, or if priority has been claimed, then from the earliest priority date of the PCT application. Upon entry into EURO-PCT phase, its EPO’s responsibility to examine the PCT application and decide on patentability criteria concerning the grant of a European Patent. 

Additional series of “steps”, in order to fulfil the paramount amount of requirements, shall be performed as well. The minimum requirements to be met can be summarised as follows: supply the translation into English, French or German if the Euro-PCT application was not published in one of the EPO’s official languages; specify the application documents; pay the EP filing fee, designation and search fees (if applicable); file the request for examination and pay the examination fee; pay the patent renewal fees for the third year (if applicable).

In general, PCT applicants need not be represented by professional representatives in the proceedings before the EPO provided they are nationals or have place of business within the territory of one of the EPC contracting states. Otherwise, all non-resident applicants must be represented by a professional representative and act through him in all proceedings before EPO. Although not required by law in the first case, representation is also recommended for both resident and non-resident applicants, preferably by appointing an EQE qualified European Patent Attorney. Professional handling of the case is in the interest of the PCT applicant, ensuring that he achieves the desired goal and procedure before EPO is conducted efficiently.