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The Patent Cooperation Treaty (PCT)

The PCT or the Patent Cooperation Treaty is an international agreement which facilitates the filing of patent applications across the member countries. It allows for a U.S applicant to file an international application within one year of filing their USPTO patent application, which will grant them the benefit of that priority filing date. They can designate all countries in which they wish to apply in with a single application, filed as usual with the USPTO Receiving Office in English. A PCT filing does not itself lead to the issuance of any international patent (there is no such thing) but will determine the patentability of your application in the countries to which you have applied. A PCT application establishes a filing date in all of the contracting states, but must be followed up by entering into the national or regional phase for the actual acquisition of patent.

Consider the PCT if:

  • You are planning or considering filing a patent application in five or more countries
  • You are planning or considering applying for foreign patents on your invention
  • You will be applying for foreign patents but would like to delay the substantial expense of filing multiple applications.

 

How to File PCT Application

The first step if you are considering filing a PCT application is to file in the United States. Once the US patent application is on file, there is a year window in which to claim the priority of the US filing date in foreign countries. This means, if you are filing in a foreign country within one year of filing in the United States, you get the benefits of the earlier filing date. Note that if you filed a Provisional Application, the one-year period dates from the filing of the Provisional Application and NOT the regular utility patent application.

The PCT application will then be searched and examined in the office the applicant has selected for that purpose. The office or offices the applicant may select depends on where they are a citizen or resident. If the applicant is a US citizen or resident, he or she may use the USPTO, EPO (European Patent Office, KIPO (Korean Intellectual Property Office), IPAU (IP Australia), ILPO (Israel Patent Office or the Rospatent (Russian Patent Office). The selected office will issue an International Search Report and an International Preliminary Report on Patentability that will give the applicant information on the viability of the application. This can be especially useful  if the applicant has selected another office than that in which the priority application was filed in that it might include prior art that the national examiner did not have access to.

Filing a “Chapter II Demand” for an International Preliminary Examination (IPRP) was once required to get the full delay period, but is now optional in most countries. There are a few countries that have not changed their laws to adapt with the uniform 30-month delay. But since all of these countries are members of regional systems such as EPO, ARIPO, OAPI, and Eurasian Patent that accepted the 30-month period, coverage is still a possibility in these countries through the regional route. An applicant can file the demand up to the later of twenty-two months from the priority date or three months after the date the International Search Report was sent. At a cost of approximately $1,500, applicants can file the Chapter II Demand which will get them another IPRP and the opportunity to file certain amendments prior to the examination.

At the completion of the PCT International Phase time period, one needs to file national applications in each country where an applicant wants a patent. To determine all the PCT dates, check the WIPO website.

 

Benefits of PCT

Filing through PCT allows applicants to delay “National Phase” filing in member countries by up to 30 months from the US filing date, in some instances 31 months. This is very helpful to applicants who need more information and time to make important decisions about where to file patent applications, especially as the cost of filing numerous patents within a one year window can be quite high. This means that filing through the PCT enables applicants up to 18 or 19 months more time that an applicant would normally have to file directly in foreign countries.

Another advantage of the PCT is the delay of national filing costs. It can also help with patent searches, as the U.S. patent office does not typically find foreign patents and a European examiner may find references which might change the applicant’s mind regarding filing patents in some countries. In addition, a positive examination report from the PCT system can facilitate later filing in other countries. The main point is that the PCT can substantially reduce the costs of foreign filings. However, please note that in the case of EPO, they will no longer act as International Preliminary Examining Authority for PCT applications from US nationals in the field of Business Methods. If the application falls in this field, the applicant will have to use the USPTO or KIPO for your PCT search and examination.

Lastly, if an applicant intends to find licensees for their foreign patent rights, PCT is a very attractive option. It can keep your options open in a number of countries for a relatively low cost and then the licensee can settle the costs of prosecution in any countries that the licensee is interested in.

 

For Non-US Inventors

For applicants that are either a resident or a national of a country that is a member of the PCT, they can file a PCT application either as the first filing or based on a national or regional patent application. However, if the applicant is neither nor a national of a PCT member country, they cannot file through the PCT.

To find out more information about the requirements in each country, look at the “General Information” page of the PCT Applicant’s Guide. 

See here for a list of all PCT member countries.