How do you protect your invention around the world? A Patent Cooperation Treaty, or PCT, application is an international patent application. It preserves your right to obtain a patent in 156 foreign countries.
In general, a PCT gives your patent international patent pending status. This international application does not eventually become an international patent enforceable around the world. If that’s your aim, you need to file a patent application in each country in which you want your patent rights to extend. This is called the ‘national phase.’
The Patent Cooperation Treaty is a system that allows for initiating worldwide utility patent coverage in just one filing. Therefore, a PCT application is a great way to streamline your foreign patent rights while keeping costs down.
Click “Play” and turn up the sound… then continue reading to get to the heart of how a PCT application can work to protect your Intellectual Property.
With a PCT, you can prepare and file essentially one patent application within a qualified receiving office and then designate multiple valid countries to preserve your ability to file there at a later date. A PCT application will delay the deadline for individual national filings, which allows you the time to keep your foreign options open for filing.
The PCT process is kicked off with a PCT application filing at which point the ‘international phase’ begins. Importantly, a PCT doesn’t mean you have attained an international patent enforceable in every foreign jurisdiction. It means you are patent-pending on a worldwide scale. In order to secure rights in foreign jurisdictions you must follow through and enter the national phase in the particular foreign jurisdiction.
What Is the PCT System?
Within the PCT system, you can file an application that spans 156 countries worldwide. After filing, the World Intellectual Property Organization (WIPO) will conduct a search and render a written opinion on the patentability of the invention – this is during the ‘international phase’ – so the applicant can gauge the prospects for getting their patent approved in all 156 foreign jurisdictions.
The PCT patent application must be processed in each country in which the applicant wants patent rights . This is the ‘national phase’, which can begin up to 2.5 years after the original application was filed, instead of 12 months if no PCT was filed, thus providing an extra 18 months to decide on the countries the applicant wants to apply.
The Benefits of Using PCT System
There are a handful of benefits when it comes to using the PCT system, and these benefits include:
- The costs for filing and translation in individual countries are delayed and can be deferred for as long as 30 months from the earliest effective filing date (priority date).
- This additional time can help the applicant determine which commercial markets take the front seat – this information usually isn’t readily available after an invention comes to life.
- It allows for a centralized search and examination.
- This may lead to reduced duplication in work related to administrative tasks and assignments.
- The search and examination takes approximately 2-4 months, which is much much faster than the search and examination in the U.S. and many other foreign jurisdictions. The search and examination yields a search report and a written opinion or International Preliminary Report on Patentability (IPRP), which opines on the patentability of the invention.
- A written opinion or IPRP indicating that the invention is patentable may be used to expedite examination in PCT member countries that participate in the Patent Prosecution Highway (PPH), such as the U.S., Europe, China, Japan, South Korea, Australia, and Canada, thus potentially leading to the grant of a patent in these countries much, much quicker.
The Drawbacks of Using PCT System
The PCT system isn’t perfect. Some of the drawbacks of using it include:
- The filing fees for a PCT application are higher
- The fees are higher than direct national filings because national or regional phases call for similar costs to filing a regular national or regional application.
- The process is slower than that of direct national filings, but it doesn’t have to be. Typically it is slower because by filing the PCT one is availing themself of the additional 18 months to process the application in a foreign country, however, you may file in any country that is a member to the PCT at whatever point prior to the national phase deadline.
- Some countries are not available to use the PCT system, like Taiwan and Argentina
Delaying the PCT Filing Deadline
When you file a single PCT application, you have the opportunity to designate any or all of the PCT countries. When you do this, you postpone the deadline for entering the national phase of the process until 30 months from the priority date. With one filing, you can buy an option that adds 18 months to the deadline for foreign filing for just a few thousand dollars.
The priority date is the date of the first filing, and is the start of the process.
Foreign Filing Deadline
The foreign filing deadline takes place 12 months after the priority date. At this point you must decide either to file a PCT application or file direct national filings, otherwise you lose the ability to claim priority to your first filing. If you file a PCT, there is no need to file a direct national filing unless the particular country is not a member of the PCT.
PCT National Phase Deadline
The national phase deadline takes place 30 months after the priority date and is applicable only if you filed a PCT application
What is a Receiving Office?
The Receiving Office is the place where the international patent application must be filed. The Receiving Office will take care of international applications in the way of filing and formalities review. But still, the question stands, what is a Receiving Office exactly?
Receiving Offices are the Patent Offices of the countries that are members of the PCT. You can’t file an international patent application in just any Patent Office – it must be filed in the designated Receiving Office.
If a situation arises where there are numerous applicants and not all of them are nationals and/or residents of the same country, the application must be filed at a Receiving Office where at least one of the applicants is a resident or national. This application can also be filed with the International Bureau acting as the Receiving Office, in this type of situation.
The U.S. Patent and Trademark Office is the Receiving Office for United States residents and nationals, but the International Bureau of the World Intellectual Property Organization can also act as the Receiving Office for United States residents and nationals.
United States inventors need to know this:
- If an invention was conceived inside the United States, then it’s necessary to get a foreign filing license before filing a patent application outside of the United States.
- If you file a patent application with the United States Patent and Trademark Office, you have automatically put a request in for a foreign filing license and one will be granted in the receipt given to you by the USPTO.
- If you don’t receive a foreign filing license, professionals at the Pentagon are most likely reviewing your application and deciding whether it warrants a secrecy order attached to it. It’s not common for an invention to require a secrecy order, but they are something to keep in mind.
You can’t file for anything internationally without a foreign filing license. But, luckily, if one isn’t granted to you explicitly within 6 months, you acquire one by default. With this reasoning, you will know in the span of 6 months whether or not there is a secrecy order imposed on your invention.
In general, a foreign filing license is not needed to file an international application in the Receiving Office of the United States, but it might be needed before the applicant or the Receiving Office is allowed to send a copy to the foreign patent office, the International Bureau, or another foreign authority.
Filing Directly With the International Bureau
You may wonder: is it possible to file directly with the International Bureau acting as the United States Receiving Office?
If your idea came to fruition in the United States and no corresponding national or international application has been filed in the U.S, and you want to use the International Bureau as your Receiving Office, you must petition for a foreign filing license under 37 C.F.R. 5.13.
The petition should be in the form of a letter and include the required fee, your address, and instructions for the delivery of the license if it is granted. It must also include a legible copy of the material that you want to be granted the license.
Can I File Patent Protection in Those Non-member of the Receiving Office?
Most developed countries in the world are members of the PCT, but there are two outliers that are not – Taiwan and Argentina. If you need to seek patent protection within those countries, note that they have a foreign filing deadline that is 12 months after the priority date.
How to File Direct Applications for Specific Countries?
During the national stage, which takes place 30-31 months after the priority date, you must file the national stage application for each foreign country that you want your patent to be valid within. This stage may cost you a fair amount of money, especially if the filing requires translation.
How Much Does a PCT Application Cost?
Estimation for a US applicant’s PCT application cost is anywhere between $3,500 and $4,500. There are no added fees for choosing to designate all PCT member countries, so it benefits the applicant to go ahead and designate them all in order to cover your bases.
Get Assistance With Your PCT Applications
The concept of PCT applications is complex and multifaceted, and there is much more to learn about it – this is just the tip of the iceberg. Our patent attorneys are highly proficient in this process and have extensive experience with PCT applications, so if you are interested in learning more, feel free to contact us with any questions you may have.