TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 263

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out by an issue of subject of

the application. The international search report is communicated to the applicant who may decide to withdraw his application and normally will do so if the report makes the granting of a patent unlikely.

14.17.

If the international application is not withdrawn, it is published together with the international search report, and communicated to each designated patent office by WIPO. Twenty months after the filing of the international application or, where that application involves the priority of an earlier application, then twenty months after the filing of the earlier application the applicant must furnish to each designated office a translation of the application into its official language. This twenty month period is extended by a further ten months where the applicant chooses to ask for an "international preliminary examination report", a report which is prepared by one of the major patent offices and which gives a preliminary and non-binding opinion on the patentability of the claimed invention.

14.18.

The procedure under the PCT has a number of advantages -

(i)

(ii)

(iii)

an inventor who is unable to file international applications under the treaty faces considerable difficulty and expense if he wishes to obtain patent protection in a number of countries, because he must file separate applications for each country. Filing costs are therefore incurred in each country including costs of translating and preparing each application in accordance with individual national requirements. Under the treaty, the inventor is able to designate in one application the treaty member countries in which protection is sought. On the basis of the international search report, he can evaluate with reasonable probability the chances of his invention being patented. On the basis of the international preliminary examination report, he is in an even better position to evaluate the application. The applicant can also use the findings of the international search made under the treaty to decide in which of the designated countries he wishes to proceed. Although some costs are incurred in filing the international application the substantial costs will be incurred only after the applicant has had an opportunity to consider whether it is worth proceeding in every designated country;

depending on whether there is an international preliminary examination the applicant has eight or eighteen months more than he has in a procedure outside the treaty to reflect on the desirability of seeking protection in foreign countries, for appointing local patent agents in each foreign country, for preparing the necessary translations and for paying the national fees. He is assured that if his international application is in the prescribed form it cannot be rejected on formal grounds by any designated office;

a reliable international search and preliminary examination report can considerably reduce the search and examination work of any designated patent office; and

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