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On Behalf of | Dec 29, 2015 | Wang IP Law Blog

The Patent Cooperation Treaty (PCT) is an international patent law signed in 1970. The PCT established an international application, also known as the PCT application, which will protect an invention in any country that has signed the treaty. Most industrialized countries are members of the PCT with a few exceptions such as Taiwan and Argentina. The PCT procedure has two phases; the international phase and the national phase.

International Phase

After obtaining a patent in the US, the inventor has one year to file a PCT and claim priority of the initial filing date in the US. In order to file a PCT application, the applicant (or one of the applicants) must be a resident of a PCT Contracting State.

Once there is a patent on file in the US, the first step to obtaining an international patent is to file a PCT application with an authorized Receiving Office. After the application is submitted, the International Searching Authority (ISA) will perform a patent search and writes the international search opinion on the patentability of the invention. The applicant can choose the ISA depending on the Receiving Office they file the application with.

The PCT application is a convenient and uniform process so that an inventor does not need to begin multiple applications in different countries. It is important to note that the PCT does not grant patents and initial patent applications will not become an international patent. The PCT only helps to speed up and begin the initial patent filing process should the inventor choose to obtain a patent in a particular country.

National Phase

After the international phase, the patent application enters what is called the national phase. The international phase lasts until the applicant decides to enter the national phase. The time limit for entering the national phase is typically 30 months but can be extended based on the law of each individual country.

The applicant will have 30 after the filing date of the PCT application, or the earliest priority date, to file a patent within a foreign country. If a patent is not filed after the 30 months, the PCT application will cease to have an effect.

Each nation can decide whether or not to grant the patent based on the international application. It is up to the inventor to pay the required fees in each country and provide any translations the country requests. Only individual countries have the ability to grant or reject a patent in their own jurisdiction.

18 months after the filing or priority date, the PCT application is published in an online database called PATENTSCOPE by the International Bureau at the World Intellectual Property Organization. From the publication date until 28 months after the priority date, any third party who reads the application can file an observation regarding the novelty of an invention that can be submitted anonymously with no fee.

Optional Step

The inventor can also request an international preliminary exam, which is a second evaluation of the patentability of the invention. This optional second evaluation is especially helpful if previous patent search had unfavorable results and the inventor wants to make amends to the application. The inventor can potentially influence the results because they are allowed to submit arguments and amendments as well as have an interview with the examiner.

At the end of the examination an international report on patentability (IPRP Chapter 2) will be drafted. The IRPO Chapter 2 is beneficial for the inventor because it helps the inventor to evaluate, more accurately, their chances of obtaining a patent. It can help strengthen an application that is going to enter the national phase, but ultimately the decision is still up to each national or regional office.

A PCT application is helpful if the inventor is deciding whether or not to file patents in other countries. The international search report can reduce the amount of time the inventor must invest in the search and examination of the patent process in each country. However, it is not cheap to file through the PCT and inventors should expect to spend four to five thousand dollars to file the application.

In 2013, about 205,000 PCT applications were filed, making that year the first year to have over 200,000 applications file. The millionth application was filed in 2004 while the two millionth was filed in 2011.

Overall, the PCT application is extremely beneficial as it is one standard application that protects an invention in all countries and simplifies the international patent application process.