For businesses operating internationally, United States patent protection alone may be insufficient. Such businesses often seek patent protection in the international jurisdictions where they conduct business. The Patent Cooperation Treaty (PCT) provides a unified system for filing a single patent application that serves as the basis for patent applications in participating international jurisdictions. This article describes the PCT system, outlines its benefits, and defines key terms to help business owners determine whether a PCT patent application is suitable for their circumstances.
The PCT International Patent System
The Patent Cooperation Treaty (PCT) established a unified international system for inventors to seek patent protection in multiple countries. Using this system, an inventor may file a single PCT patent application that has the same legal effect as filing a separate patent application in any PCT member country. These countries are called “Contracting States.” Currently, there are 158 Contracting States including all of the world’s largest economies: the United States, all members of the European Union, China, Japan, South Korea, Australia, Mexico, and Canada.
Benefits of a PCT Patent Application
Unified, Single Application: A PCT patent application enables an inventor to initiate the international patent process with a single application filed through their receiving office (typically the USPTO for U.S. residents). This single application has the same legal effect as filing an individual application in each Contracting State.
Additional Time to Decide Jurisdictions: A PCT patent application provides additional time to decide where to file local patent applications, generally 30–31 months from the application priority date. By comparison, individual applications filed directly in local jurisdictions must typically be filed within 12 months to claim priority to the prior U.S. application.
Search Report: Applicants receive an initial patentability report (a “Search Report”) that provides useful guidance on subsequent procedural steps.
PCT Procedure
The PCT system allows an inventor to file a single patent application in one language through a designated “receiving office.” The United States Patent and Trademark Office (USPTO) serves as a designated receiving office for PCT patent applications. A PCT patent application contains the same components as a USPTO patent application: specification, abstract, drawings, and claims, plus a PCT request form with inventor information, invention title, addresses, and required declarations. The receiving office reviews the PCT patent application to ensure all required parts and information are provided. A PCT patent application is often based on an existing U.S. patent application already filed in the USPTO and generally claims priority to that U.S. application.
The PCT patent application process has two phases: (1) the “international phase,” which lasts approximately 30–31 months from the priority date and occurs before specific countries are selected for local applications, and (2) the “national phase,” which begins when an inventor selects specific countries for patent examination. National phase duration depends on the countries selected.
International Phase
The international phase includes three main components: (1) formalities check, (2) search report, and (3) publication. The receiving office performs the formalities check, reviewing the application documents to ensure they meet all legal requirements. One of the key benefits of the PCT patent application process is the search report is performed by an authorized patent office of the inventor’s choice (the International Searching Authority or ISA) and provides an initial patentability opinion. The search report offers valuable insights into subsequent procedural steps for the application. The World Intellectual Property Organization (WIPO), which administers the PCT system, publishes all PCT patent applications 18 months after the application’s priority date. The international phase does not confer any granted patent rights.
National Phase
The national phase occurs when the inventor selects one or more participating countries in which to seek patent protection. During the national phase, the PCT patent application is examined by the intellectual property office in each elected country. Because the PCT patent application is unified, it generally does not require modification to enter the national phase, aside from translation into the local language. The search report is used in the examination process, and local patent counsel is required to file the national phase application. The local intellectual property office determines whether to grant patent protection to the application.
Costs
The cost to file a PCT patent application varies based on several factors, including the application size, number of claims, and choice of international searching authority. The filing fee ranges from approximately $2,000–$4,000. Legal fees typically range from approximately $4,000–$6,000. The McConnell Law Firm offers competitive flat-rate legal fees for filing PCT patent applications.
National phase costs range from as little as $1,000 to more than $5,000 per jurisdiction, depending on the jurisdiction size, local intellectual property office filing fees, local counsel costs, and translation costs (if required).
PCT Deadlines
Filing: Applicants have 12 months from the priority date of the underlying patent application to file a PCT patent application.
Search Report: Generally received within 16 months of the PCT application priority date.
Publication: 18 months from the PCT application priority date.
National phase entry: For most Contracting States, 30–31 months from the PCT patent application priority date. Two shorter deadlines of 20/21 months apply (Luxembourg and Tanzania).
PCT Glossary
Patent Cooperation Treaty (PCT): The treaty that enables PCT patent applications, ratified by Contracting States.
PCT patent application: A unified patent application and process that enables filing an international patent application serving as the basis for national patent applications in 158 Contracting States.
Contracting States: There are 158 Contracting States, which are countries or foreign jurisdictions that are members of the Patent Cooperation Treaty and accept PCT patent applications.
Priority date: The first filing date for a patent application for an invention in a particular family, which may be the same as the filing date.
International phase: The period before specific countries are selected for local patent applications, lasting approximately 30–31 months from the priority date.
National phase: The phase when the inventor selects specific countries for patent examination and files local applications.
Formalities Check: The receiving office’s review of the application to ensure compliance with PCT requirements.
Search report: An initial patentability report produced by the selected International Searching Authority (ISA).
Publication: WIPO publishes all PCT patent applications 18 months after the priority date.
Receiving office (RO): The local intellectual property office that accepts PCT patent application filings. For U.S. residents, the receiving office is the United States Patent and Trademark Office (USPTO).
International searching authority (ISA): The local intellectual property office that performs the search. The USPTO and European Patent Office (EPO) are common options for English language applications.
Conclusion
A PCT patent application can provide a cost-effective and efficient basis for patent protection in foreign jurisdictions. While the process is streamlined, it is essential to retain qualified patent counsel to provide guidance, consultation, and manage the application process. Early decisions regarding international patent protection are beneficial, so discuss any international requirements at the start of the patent process. To explore whether a PCT application is right for your business, schedule a consultation with experienced patent counsel.
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This information is general in nature. Always consult with a licensed patent attorney for advice specific to your situation.
Robert McConnell is the Principal Attorney of McConnell Law Firm PC, with more than 20 years of startup and legal experience in both Silicon Valley and Los Angeles.