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Austrian engineer A has developed a novel energy storage system based on a particularly efficient combination of supercapacitors and lithium cells. Initial technical articles and feedback from pilot projects show that the technology could have great potential for electromobility. A therefore applies for a patent in Austria to secure the earliest possible filing date. After a few months, A has already attracted interest from investors, but no concrete contracts or licenses have been finalized yet. It is also unclear in which countries the greatest demand will arise: While German car manufacturers are examining a possible application in premium vehicles, a US corporation has expressed interest in stationary storage systems, and there are initial inquiries from China for use in public transport. As the priority period slowly comes to an end—around the tenth month—A faces a dilemma: he does not yet know which markets will actually bring the greatest economic benefits, but he does not want to lose patent protection under any circumstances. A complete network of individual applications in all potential countries is not financially viable. At the same time, it would be risky to limit himself to just one or two countries, as market development is still completely open. The Austrian application process is also currently unfinished because A is currently struggling with the patent office examiner over the correct wording of the claims. In order to secure room for maneuver, A must now consider how to maintain patent protection beyond the priority period without immediately spending huge sums on applications in numerous countries.

Rationale

Priority rights offer a fundamental opportunity to facilitate patenting worldwide. However, a 12-month reflection period is often too short to make an informed decision about the economic and legal significance of an invention in different countries. Often, after 12 months, there is still no comprehensive research available to provide information about the prospects of success for patenting. In addition, it is often not possible to estimate in which countries patent protection will actually be relevant. Another problem is that after one year, there may not be sufficient financial resources available to carry out worldwide patenting.

To solve this problem, the international patent application was created in the 1970s. The aim was to grant the applicant a decision period of 30 months, thus offering more flexibility when filing applications abroad. However, the procedure for this international patent application differs from that of the priority right. Here, the applicant submits a single application, which is immediately considered a bundle of national applications. This application remains uniform for the first 30 months, a phase known as the international phase. After this phase has expired, applicants must begin separate national application procedures in each country, which is referred to as the national phase.

For A, the international patent application (PCT) is the right solution. With a single application, he secures the option of patent protection in many countries and gains up to 30 months before he has to decide on specific countries. This allows him to observe how the market and technology develop without having to immediately incur enormous costs for translations and national procedures. The PCT application is slightly more expensive than a purely national application, but it saves high initial costs and gives A flexibility. This keeps his options open for global exploitation and allows him to target countries that prove to be economically relevant.

International Phase

The international phase begins with the filing of the international patent application at a so-called receiving office. There are different receiving offices depending on the nationality or residence of the applicant. For Austrian applicants, for example, the Austrian Patent Office (ÖPA) or the European Patent Office (EPO) can act as the receiving office. Alternatively, the application can also be filed with the International Bureau of WIPO in Geneva. All submissions are now made electronically. After submission, the application is formally examined and the corresponding fees must be paid.

A could file his international patent application directly with the Austrian Patent Office. There, only a formal examination is carried out, for example to check whether the documents are complete and the fees have been paid. The Austrian Patent Office then forwards the application to WIPO in Geneva, where the international phase is centrally administered. In this way, A can easily start the PCT process without having to deal with the procedures in each individual country.

Once the formal filing has been completed, the work of a search authority begins in the international phase. This authority prepares an international search report listing relevant publications that could call into question the novelty or inventive step of the invention. For Austrian applicants, this task is regularly performed by the European Patent Office (EPO). The report is published together with an initial written opinion and provides the applicant with a valuable overview of the chances of a patent being granted at a later stage.

In the case of A, however, the report is critical: several documents are cited that suggest or anticipate parts of his invention. For A, this is a warning signal that he needs to rethink his strategy and, if necessary, prepare evidence or arguments for inventive step for the European application procedure.

As with any national application, the international patent application is published 18 months after the filing date or the earliest priority date. At this point, the application is made available to the public, regardless of whether the patent has already been granted or not. If the search authority has already completed its work after 18 months, an A1 publication of the application is made together with the search report. Otherwise, there will first be an A2 publication of the application, followed by an A3 publication of the search report.

The applicant has the option of additionally requesting an international preliminary examination. In this case, the competent authority – for Austrian applicants, this is also the European Patent Office (EPO) – prepares an assessment of the patentability of the invention. Although this opinion is not legally binding, it is used by many national and regional patent offices as a basis for their own examination procedures. A positive result can therefore considerably facilitate and accelerate the subsequent procedure.

A decides in favor of such an international examination by the EPO after an initially very critical search report. Since he is aiming for a European patent anyway, he wants a reliable assessment by the EPO as early as possible. Since A's arguments are convincing, the international examination is positive, so A can assume that his carbon fiber has a good chance of being granted a patent by the EPO. This result gives him the confidence to actually pursue the expensive procedure in Europe.

It is important to emphasize that the international phase does not provide a worldwide patent. Rather, it merely gives the applicant additional time to pursue the national application in the desired countries.

Even if the international examination for A's application has been positive and a European patent appears likely, this does not mean that a decision has been made regarding the US or other countries. Even the EPO could change its assessment if new prior art emerges. The international phase therefore only offers A an extended period of consideration, but does not replace the national examination in the individual countries.

National Phase

The international phase ends 30 months after the filing date. By this date, the applicant must continue the procedure in each country in which they seek protection. If this is not done, the application lapses in these countries.

A decides to initiate the national phase in the US, Canada, Japan, and at the European Patent Office. The remaining parts of the application, for example for China or Korea, automatically lapse. This means that A irrevocably loses the opportunity to obtain patent protection for his invention in those countries at a later date.

The steps that must be taken to initiate the national phase are referred to as transition, and vary from country to country. Typically, translations must be submitted, fees paid, and, if necessary, national representatives appointed. Transition is therefore the most expensive step in the entire process up to this point, as this is when the costs for translations, national fees, and the appointment of local representatives in each individual country come into full effect for the first time – and thus has a particularly significant impact if many countries are selected.

The transition to the national phase requires different steps in each country. Since the international application was filed in German, the US Patent Office requires an English translation, and the Japanese Patent Office requires a translation into Japanese. The European Patent Office accepts the German application without further translation. In all countries, A must also appoint an authorized representative and pay the prescribed fees. Only then can it be ensured that the application will be continued in the respective countries and will not lapse. Costs of around EUR 5,000 may be incurred per country.

After the international application has been transferred, the application enters the national phase. In this phase, the respective national patent office examines the application in accordance with national regulations. This means that the application is either granted or rejected, depending on the respective regulations of the country. The patents resulting from an international patent application are independent of each other, just as in applications based on priority rights.

After the transition, A enters the national phase and must now conduct four parallel proceedings. At the European Patent Office, he succeeds in obtaining a full patent, but in Japan, the application is finally rejected. In the US and Canada, he obtains a patent, but only with restrictions on the scope of the claims. This shows that the procedures in the individual countries are completely independent of each other and can lead to different results.

All patents originating from an international application have the same filing date. This means that the 20-year term also begins on this filing date for all countries, and thus all patents expire after exactly 20 years. However, the patents are independent in that the patent holder can decide separately for each country whether or not to pay annual fees, i.e., individual patents arising from the same international application may expire earlier than others due to non-payment of annual fees. Similarly, individual patents can be declared invalid at the national level.

All of A's patents arising from the international application have the same filing date and generally expire after 20 years. However, A decides to maintain the European patent until the end, as there is still demand for the technology in Europe. In the US and Canada, on the other hand, the technology is being overtaken by new developments, so A decides to stop paying the annual fees there. These patents therefore expire prematurely, while the European patent remains in force until its regular expiry date.

Combination with the Priority Right

A particularly interesting feature of the international patent application is that it can be combined with the right of priority. This means that the international application can claim the priority right of an earlier national application. For example, an applicant can first file a national application (e.g., in Austria) to save initial costs. Within the 12-month priority period, an international application can then be filed as a subsequent application based on the Austrian application. In this case, the 30-month international phase is calculated not from the date of the international application, but from the date of the initial application whose priority right is claimed.

For A, this means that he can first file a national application in Austria to keep costs low and secure his invention. Within 12 months of this initial application, he then has the option of filing an international application based on the Austrian application. This gives A a total of 30 months from the date of the initial application to decide in which countries he wants to seek protection – i.e., a good 18 months after the expiry of the priority period. This allows them to better assess the economic significance of their invention before incurring the high costs of national procedures.

In principle, it is also possible to claim the priority right of an international application for a subsequent (possibly also international) application. However, since filing an international application typically incurs higher costs than a corresponding national application, this approach is uneconomical.

The First Page

A glance at the cover sheets of international patent applications and the resulting national patents provides a wealth of important information. The cover sheet not only lists the title of the invention, the applicant, and the inventor, but also information about the international patent application.

The cover sheets shown here depict an international patent application filed in Germany (left) and a resulting US patent application (right) in sections. The filing date (INID code 22) is given as January 29, 2021 for both publications, i.e., the US application “inherits” the filing date from the international application. The international file number is indicated in the international application as the application number (INID code 21) and in the US application as the PCT number (INID code 86). Entry into the US phase took place on July 21, 2023 (INID code 86). No priority right was claimed.

If a priority right has been claimed, this is also indicated on the relevant cover sheets of the international patent applications (PCT) and the resulting applications. These are also published with standardized INID codes. The disclosure of this priority information makes it possible to clearly trace the priority date of the individual applications and to present subsequent applications in a transparent manner.

The initial application (cover sheet excerpts in the left column) is a German patent application DE 10 2022 210 110 A1 dated September 26, 2022. The international subsequent application filed with the European Patent Office (cover sheet excerpts in the middle column) has the application number PCT/EP2023/076097 and claims the priority right of the German application (INID code 30) and refers to application number DE 102022210110. 3 and filing date 26 September 2022. The US patent resulting from the international application (cover sheet excerpts in the right-hand column) shows the priority information (INID code 30) and refers to the German application. On the other hand, the US cover sheet also indicates the application number PCT/EP2023/076097 and the filing date 21 September 2023 of the international application (INID codes 22). The maximum term of any US patent granted is then 20 years from the international filing date.