PCT France: a new way to protect your invention in several countries, including France

The PCT is a procedure for filing patent applications in several countries at once. However, unlike the European patent, which can be obtained in all countries of the European Union, there is no analogous international patent.

Inventors seeking international protection can either file a patent application directly on a country-by-country basis, or file a PCT, which must be opened in each country of interest within 18 months. This is known as “PCT phase entry”. What’s the point of the PCT?
It saves 18 months, during which it will be possible to prospect potential foreign markets, investors and partners, before choosing the countries.

Direct entry into the French national phase (FR) of an international PCT application would make it possible to choose France, without necessarily having to go through a European patent, and thus greatly facilitate procedures and reduce costs for inventors who don’t ultimately want protection in every country in Europe.

Apply for a PCT

To obtain patent protection in several countries at once, it is advisable to use the Patent Cooperation Treaty (PCT). This is an advantageous procedure which enables the inventor to obtain an examination report from the International Patent Office with an opinion on patentability, and to option most countries in the world for 18 months, while he chooses the countries of interest.

This international arrangement takes place in 2 stages.

1 – The international phase

The PCT international application is filed with WIPO. A few months later, a prior art search report and a written opinion of the Examiner are sent to the applicant. This gives the opinion of a Patent Office Examiner on the patentability of the invention, and provides the relevant prior art.

2 – The national/regional phase

18 months after filing the PCT application, it’s time to exercise the option and choose the countries to enter the national/regional phase. In practical terms, this involves filing the PCT patent application in each country where grant is desired, each of which will carry out an independent examination. In this way, you can end up with a patent granted in the USA, but rejected in China and limited in Japan.

The PCT thus enables an opinion on patentability to be obtained at the international stage, but then, when the national and regional phases are opened, the State Offices are not obliged to follow this opinion. This means that grant in the chosen countries is not guaranteed, even with a positive report at the international stage. Only the office of the country in which the patent application is filed can grant the patent.

What happens during the national/regional phase?

In the case of a national opening in the United States, the United States Patent and Trademark Office (USPTO) takes over from the PCT process, examining and possibly granting a US patent.

In the case of an opening in the European regional phase (Euro PCT), the European Patent Office (EPO) takes charge of the PCT application and proceeds with the examination and possible granting of a European patent, which will itself be broken down into a multitude of national patents in the countries validated by the holder (Spain, Italy, France, Germany…).

Towards a French PCT?

However, a majority of member states, including Germany and the UK, have both a European regional opening and a direct national opening. Thus, for an invention that you wish to protect in Germany and the UK only, you can open a PCT with the German and English Offices, without having to go through a European patent and the European Patent Office.

This is not the case in France. As a result, it is currently impossible to enter the French national phase directly from a PCT filing, as this designation is currently only obtained by entering the European regional phase, and then, once the European patent has been granted, validation in France.

The European patent thus granted then applies its effects in each of the countries designated by the Owner in the same way as a national patent. For applicants wishing to protect their invention in France, it is therefore essential to obtain a European patent. Thus, if an applicant wishes to protect his invention in France, Germany or the UK, the countries with the highest number of validations of European patents, he will be obliged to go through the European patent (to be able to choose France), with higher costs and a longer, more severe examination.

This would not only simplify the procedure for holders wishing to designate a small number of countries, including France, but would also reduce the time needed to obtain a patent granted in France, while saving the costs inherent in the various stages involved in obtaining a European patent and validating it in France.

The solidity of a French patent resulting from a direct national opening in France (PCT/FR) compared to a French patent resulting from a European patent validated in France following an examination by the EPO (PCT/EP/FR) does however raise questions, as the EPO is reputed to be more demanding than theINPI when it comes to analyzing patentability.