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This blog was written by Roy Rosser, patent agent at Gearhart Law
Edison of Arabia – Saudi Arabia joins the PCT
As of August 3rd, 2013 Saudi Arabia (SA) will become the 147th country to join the Patent Cooperation Treaty (PCT).
The PCT is an international Intellectual Property rights treaty administered by the United Nations through its World Intellectual Property Office (WIPO). Neither WIPO nor the PCT issue patents, but they do provide a relatively inexpensive way to keep your options open in the 147 countries that are member states by filing a single patent application, in English. The PCT application must be filed within 12 months of any application it claims priority from. This is usually a US provisional application. The PCT application is pending in all 147 countries up to 30 months from its priority date, after which it must be converted into national stage filing in whichever country the applicant chooses. The cost of filing the application varies depending on choices, but is typically about $2000.00. The expensive stage is the national stage filings at 30 months, though, if plans have not worked out, you don’t need to file in any country.
SIMPLIFIED PCT TIMELINE
0 months File US Provisional Patent Application
12 months File PCT Application
16 months Written Opnion of the International Search Authority is issued (WOISA)
Expedite US National Application via the Patent Prosecution Highway (PPH)
License to foreign countries
30 months National Stage Filings
Your patent application is examined for patentabilty and a Statement of Patentability, known as the Written Opinion of International Search Authority (WOISA) is issued at 16 months from the date of priority. (WIPO, like SMERSH before it, is riddled with acronyms).
If your WOISA is favorable – indicating that your invention is novel, has an inventive step and has practical utility – it may be used to fast track other national applications, including a US national application, using the Patent Prosecution High (PPH). The PPH is a system that allows you to get your application to the top of the Examiner’s “to do” pile by relying on the prior art found in the PCT examination – and there is no extra USPTO fee!
When filing a PCT application, you also have the option to indicate if your invention is available for licensing and under what conditions. As many of the 147 PCT states, including Singapore and South Africa, will issue patents based on a favorable WOISA as an alternative to a national search, this provides an opportunity for inventors to defray the cost of patenting by licensing the product into parts of the globe they have no intention of operating in even before the 30 month date. To indicate you are open to licensing your invention, all you need to do is to file a form PCT/IB/382 (see link below) and the information will be displayed and searchable on WIPO’s Patentscope Data Base.
For more detailed information on any or all aspects mentioned above, either contact Gearhart Law at info@www.gearhartstg.wpenginepowered.com or visit one of the links below:
Innovation in Saudi Arabia:
http://www.kaust.edu.sa/about/about.html
The PCT process:
PCT Applicant’s Guide to the International Phase:
http://www.wipo.int/pct/en/appguide/ipindex.jsp
Making invention available for licensing: FORM PCT/IB/382
http://www.wipo.int/export/sites/www/pct/en/forms/ib/editable/ed_ib382.pdf
WIPO’s Patentscope Data Base:
http://patentscope.wipo.int/search/en/search.jsf
The Patent Prosecution Highway:
http://www.uspto.gov/patents/init_events/pph/
Lawrence of Arabia (1962):
http://www.imdb.com/title/tt0056172/