Patent Cooperation Treaty (PCT) Application: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the Patent Cooperation Treaty (PCT) application.  I’ll explain what it is, what to know before filing, and why it is an important tool for protecting an invention internationally.

What a Patent Cooperation Treaty (PCT) Application is:

A Patent Cooperation Treaty (PCT) application is a type of patent application filed to protect an invention internationally and usually in a least three countries.  The Patent Cooperation Treaty itself is a treaty between over 150 Contracting States, i.e. countries. This treaty allows an inventor in any of the Contracting States to file one PCT application to seek protection in any of the individual countries that are part of the treaty.

A PCT application is also called an international patent application. These names may seem deceiving, as a PCT application does not itself become an issued international patent or PCT patent (these don’t exist).   Instead, a PCT application is used as a time bridge between its filing and the expensive step of filing national and/or regional patent applications in individual countries.

There are specific requirements that must be met for a PCT application filing to be accepted and for the invention itself to qualify for protection.  The PCT application filing requirements are defined by the World Intellectual Property Office (WIPO).  WIPO administers the PCT and is responsible for much of the PCT process, including performing a formality examination.  The United States Patent and Trademark Office (USPTO) acts as a Receiving Office for PCT applications and also offers information on the PCT process.

What to Know Before Filing:

To proceed towards international protection though the PCT, the first step in the process is filing the PCT application with WIPO or an appropriate Receiving Office.  The USPTO is available to act as the Receiving Office for residents/nationals of the United States. To be entitled to file a PCT application, at least one inventor must be a national or resident of a PCT Contracting State.

The PCT process, or international phase, is divided into two chapters (I and II), with chapter II being optional. Once filed, chapter I begins and the application is reviewed for its adherence to the filing-formalities required by WIPO, as agreed to under the treaty.  The time period that begins with the filing of a PCT application is called the international phase of a patent application. During this phase, a PCT international search is performed by an International Searching Authority (ISA). The ISA reviews the PCT application and performs a search of the currently issued and published patents/applications/technical documents and compares them to the pending PCT application. The results of the search are published in an international search report and written opinion of the ISA.

The international search report is, in essence, a list of the documents that the ISA believes may have an impact on the patentability of an invention.  Each document listed includes an indication of its relevance to an invention’s novelty or inventive step. Together with the written opinion, the international search report provides an inventor with high-quality insight into the patentability of an invention.  An optional supplementary international search report may also be requested and would be carried out by a different ISA than the original.

After the international search is completed, the international phase continues with online publication by WIPO.  With publication, the pending PCT application is available online to the public, including the results of the international search report and opinion.  Publication generally takes place 18 months after the PCT application is filed. Alternatively, if the PCT application claims the benefit of an earlier filed application, publication takes place 18 months from the original filing date (priority date). If the findings by the ISA are not favorable, and the patentability issues indicate an unfavorable conclusion, some inventors choose to withdraw a PCT application before it is published.

After publication, the inventor has the opportunity to proceed with the optional chapter II of the international phase.  Chapter II begins with the submission of a request for international preliminary examination. This is a request for an additional search, like that performed by the ISA, to assist in determining patentability.  The difference is that the inventor is given an opportunity to amend the PCT application in an attempt to overcome the original ISA findings. The inventor is also entitled to an interview with a patent Examiner. Chapter II is the only time that amendments can be entered before the national phase begins.

At the conclusion of chapter II, an international preliminary report on patentability (IPRP) is issued.  The IPRP is issued to the inventor, WIPO, and the national patent Offices. Like the international search report and written option, the IPRP gives a detailed report on the potential patentability of the invention.  If the report is favorable, it provides a strong basis for continuing a PCT application through the national phase. Ultimately, a PCT application must enter the national phase to be examined in an individual country’s patent office before the application can be issued as a patent in that country.

The publication of the IPRP concludes the international phase and the PCT application must then enter the national phase.  The national phase is the processes of submitting the PCT application to the individual PCT Contracting States (countries) in which protection is sought. The deadline for entering the national phase, in the majority of countries, is at 30 months from the PCT filing date or from its priority date.

Why a Patent Cooperation Treaty (PCT) Application is an Important Tool:

The PCT route to international protection is the most simple and cost effective route.  The PCT option simplifies the process by allowing for a single PCT application to be filed in a single language and with one receiving office.  A PCT application also provides the international search report and written opinion of the ISA, which provides insight into the patentability of the invention.  Lastly, the PCT option allows for the expensive step of entering the National Phase to be postponed until the patentability of the invention is better known. The PCT application is truly an important tool, because without it, some inventors could not afford the expense of filing for international protection.

A Patent Cooperation Treaty (PCT) application is also an important tool, because the national patents that can result from filing a PCT are important.  All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, PCT patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a PCT application or other patent applications.