Information regarding Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) can simplify the process of obtaining patents in many countries. A PCT application for the invention of interest is filed with the PCT authorities, who looks at the invention’s patentability. The assessment helps one decide if the cost and effort of pursuing patent protection for the invention in specific countries is justifiable. The PCT countries (listed below) allow one application to be filed and prosecuted, instead of having to file separate applications.

A PCT application can reduce the cost of obtaining patent protection in several countries. If one were to file separate patent applications in each country instead of filing a PCT application, many additional fees and procedures must be considered. The PCT application process streamlines the process making it easier and cheaper to file a single application in many different countries.

The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva. The following countries are part of the PCT :

Parties seeking protection in countries not covered by the PCT must file individual patent application in each country. The non-PCT countries have several rules.

A PCT application may be an originating application, if no other application to patent the invention has been filed. Alternatively, a PCT application may be filed within one year of the filing of an earlier application and claim the priority date of the earlier filed application. For example, an individual can file an application in the United States for invention X. Within one year of filing that application, the individual must file a PCT application for invention X, if he/she wants coverage in other countries.

The actual processing of a PCT application begins when a search report and patentability opinion are issued. The search report lists prior art references to be considered relevant. The opinion indicates whether the invention is novel and inventive in comparison to the prior art, and whether the invention has the required degree of industrial applicability. If the search report and opinion are favorable, then the applicant may elect to proceed into National Phase Entry for each country that the applicant seeks protection. If the search report and opinion are unfavorable, the applicant may simply abandon the application to avoid further costs. Additionally, this preliminary examination provides a basis for examination in each country of the designating countries, making the prosecution phase much easier.

Eighteen months after the original application is filed, WIPO publishes the PCT application and the search report (the patentability opinion is not published at this stage). The applicant must enter the national phase (i.e. submit the patent application to each country’s patent office) within each countries designated deadline, which is usually within thirty months (thirty-one months in some countries) of filing the original application, by submitting a copy of the search report and patentability opinion. There is also an “international preliminary report on patentability” which is made available to the chosen national patent offices, if the application enters the national phase.

When the national phase is entered in each selected country, the applicant pursues separate patents pursuant to the laws of each chosen country. The PCT process makes this considerably easier by allowing submission of a single English language PCT application in each country, thus avoiding many translation costs.