The Patent Cooperation Treaty (PCT) Applications
The Patent Cooperation Treaty (PCT) is an international patent law treaty that allows one to file an international application that designates future application filings to the PCT signatory countries (currently numbering over 150) within a 30 month window. In essence, the international application is filed first and then a national stage application is filed afterwards during the time window to any Patent Office of the desired PCT signatory country. From one international application, national stage applications can be filed to several different countries. The national stage application will be examined by the Patent Office where it is filed, why may result in the issuance of a patent in the country where the Patent Office is located. Since the enforceability of patents is territorially limited to the country where the patent issued, one should consider filing patent applications in multiple markets to ensure patent protection in those areas, especially those that are of strategic value. Accordingly, the international application, which is often referred to as a PCT application, provides an efficient approach to secure patent protection in several markets concurrently.
There several benefits in choosing a PCT application:
• Up to 30 months to explore which markets are viable for the invention before choosing to target which market for national phase entry (filing of the national stage application);
• Deferral of costs for filing national stage applications to their respective PCT signatory countries;
• Convenience where just one patent application needs to be filed to start this process; and
• Uniformity in the application process.
With regards to the 30 month window, this time window may be calculated differently as shown in the three examples below. The first example involves filing the PCT application first and then filing any national stage applications to the desired PCT signatory countries later. In this way, the 30 month window to file any national stage application is calculated from the filing date of the PCT application. The second example involves filing a provisional application in the United States first and then filing a PCT application prior to or at 12 months from the filing date of the provisional application. Here, the 30 month window is calculated from the filing date of the provisional application. For example, if one files the PCT application 12 months after filing the provisional application, then one has 18 months from the filing date of the PCT application to file any national stage application. The third example involves filing a non-provisional application in the United States first and then filing a PCT application prior to or at 12 months from the filing date of the non-provisional application to target several other foreign markets. Similar to the second example, the 30 month window here is calculated from the filing date of the non-provisional application.
Procedurally, the PCT application process begins with the filing of the PCT application at an authorized Receiving Office. The Receiving Office is the Patent Office of the PCT signatory countries. A suitable Receiving Office is the Patent Office where at least one of the applicants is a resident or national of the country where the Receiving Office is located. Alternatively, the applicant(s) may file the PCT application at the International Bureau of the World Intellectual Property Organization (WIPO), which may act as a Receiving Office. The Receiving Office checks the PCT application for formality issues and will notify the applicant or the applicant’s representatives of any formality errors that the application may contain. If the Receiving Office identified any formality errors with the international application, then the applicant will be notified and given a limited amount of time to correct these errors. Following this initial review, the Receiving Office transmits the application to the International Bureau (if not initially received) and the International Searching Authority.
The International Searching Authority is the Patent Office that is deemed competent to conduct the international search of the PCT application and issue written search reports. The applicant selects one of designated Patent Offices to conduct this search. The International Searching Authority conducts an international search to the claims of the PCT application and will issue a search report that provides information on the relevant prior art discovered during this search. Furthermore, the search report may comment on formal and substantive matters with respect to the contents of the PCT application, which may or may not be favorable to the applicant. Contents of the search report will be used during examination of the national stage application.
While the PCT application provides convenience and uniformity for its application process, the total fees might be too great if the applicant is targeting just a few markets. There is another application process to secure patent protection in foreign markets under the Paris Convention. The window to file an application under the Paris Convention is 12 months rather than 30 months from the filing date of an earlier application. Accordingly, the time window to gauge the viability of a market for the invention is greatly reduced. However, filing under the Paris Convention may be less expensive than filing a PCT application under certain circumstances because of the possible reduced upfront fees for Paris Convention applications and the lack of fees associated with national stage entry. However, if the applicant is considering to file in several countries, then the fee differences between applications filed under the PCT and Paris Convention are reduced and the uniformity of the PCT process may make the PCT application an attractive option.
To determine which approach is suitable for your invention, please consult a registered patent professional who is qualified to assist you in international patent filing matters.
Disclaimer: This post is for general information only, and thus does not serve or represent any legal advice. No attorney-client relationship is formed.