The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries.

What is it?

The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries. Several benefits afforded to applicants by the PCT include a formalities check, an international search and an optional supplementary international search, an optional international preliminary examination, and an automatic deferral of national processing. These options provide an application with more time and a better idea of whether or not it’s advisable to file an application, and in which countries.

It is important to note that there is no such thing as an international patent, only international patent applications. The PCT procedure does not allow an applicant to receive a “global patent” of sorts that applies to all relevant national Offices. The PCT procedure merely simplifies the process of applying for a patent in multiple countries through the use of an international application process. As detailed below, the international application is sent to each national Office, where it will be either approved or rejected on a country-by-country basis. Use of the PCT, however, still carries a number of advantages, and should certainly be considered if an applicant plans on working towards receiving recognition for a patent in multiple countries.

What can it be applied to?

The international application process can only be applied to the protection of content tha falls under the category of “inventions”. This pertains to inventions, inventors’ certificates, utility certificates, utility models, and several other kinds of patents and certificates. Essentially, if an applicant wishes to file for something that falls outside the scope of “inventions,” such as for a design patent, the applicant cannot do so under the PCT.

How does it work?

The PCT procedure has two different phases, informally referred to as the International Phase and National Phase. The international application process begins in the International Phase, and then (if the results of the international application are favorable) through the National Phase of the relevant countries. The International Phase consists of five parts, three of which are required.  The three required steps involve: 1) filing the international application and having it processed by the “receiving Office” (usually the PCT office of the inventor’s native country); 2) the preparation of an international search report and written opinion by an “International Search Authority”; and 3) the publication of the international application with the international search report. This publication is then sent by the International Bureau to the national Offices where the applicant wishes to have a patent granted.

The optional fourth and fifth steps are additional procedures that happen concurrently with step three. Should they be utilized, the resulting reports are sent along with everything else by the International Bureau to the relevant national Offices. The fourth step includes conducting a supplementary international search, carried out by one of several International Search Authorities that were not involved in the primary international search. These supplementary searches result in supplementary search reports, which may also be sent to the relevant national Offices during the third step. The fifth step involves an “International Preliminary Examination” which results in an international preliminary report on patentability. The report analyzes aspects of the invention and determines the general patentability of the invention. If conducted, this report is also sent to the relevant national Offices during the third step.

In order to proceed to the National Phase, the applicant must also take several additional actions in each of the relevant national Offices. These include paying required national fees, providing the Offices with applicable translations of the application, and appointing a patent agent where required. If these steps are not completed within the specified time restraints in a particular national Office, the application is no longer relevant in that Office.

Upon completing the required steps for each relevant national Office, those Offices then examine the application and either grant or refuse the national patent to the applicant. This is where the application is in the National Phase. An application can proceed into the National Phase in some countries while remaining in the International Phase in others, usually if the applicant began the filing process for an application in a specific country before utilizing the PCT. Be aware that subsequent changes to the application in the International Phase will not retroactively affect applications that are already in the National Phase. Applying those changes to applications in the National Phase require the applicant to directly change the national application(s).

Why is it beneficial?

There are several benefits to using the PCT procedure. The largest benefit, however, is the simplification of the international patent application process for the applicant. The PCT allows the applicant to file the international application in one place, in one language, and pay one set of fees. This application is then recognized in all relevant national Offices, and so the applicant does not have to file a separate application for each Office (as would be the case without the PCT).

Simplicity

Most countries that use the PCT have a national Patent Office where the applicant can file the international patent application. This allows an applicant to remain in his or her native country throughout the process and localizes the applicant’s efforts in one place. This localization benefit also allows the applicant to file the application under one language accepted by the Office (which usually ends up being the native language of the applicant) and have the fees paid using one currency, thus avoiding currency exchange difficulties that would otherwise result. The required forms are also standardized under the PCT, allowing applicants to fill out a single set of forms and not worry about dealing with different forms used by different national Offices.

Chances of patentability

Additionally, search and opinion reports produced by the International Phase of the international application process assist the applicant in making decisions regarding whether it is worth prosecuting the application and where. Again, this saves a considerable amount of time and effort on behalf of the applicant, as a centralized report avoids the need to have searches and opinions conducted in each relevant national Office. The option to have supplementary searches conducted by International Search Authorities other than the one who carried out the main search increases the value of the PCT even further. Supplementary searches may provide the applicant with a much clearer picture of relevant prior art and allow the applicant to better determine the chances of successfully patenting the invention under consideration.

Time

The extra time afforded to the applicant by using the PCT is also a very valuable benefit. Most national Offices under the PCT allow for 30 months from the priority date before the application must enter the National Phase. This considerably long grace period in the International Phase gives the applicant time to examine and consider the results of searches and opinions provided by the International Search Authorities, as well as assess the international technical and economic climate. It is then that the applicant can decide which countries are worth the time and cost commitment of applying for a national patent, and save on translation, agent, and filing costs in those that are not.

Stronger case

Another benefit is that a favorable international search report will carry considerable weight when the applicant enters the National Phase and attempts to acquire a national patent for an invention. The benefit of a favorable international preliminary report on patentability (if the applicant chose to have one conducted) is even greater. If the report is only partly favorable, the applicant has the opportunity to modify the claims in the application to focus on the aspects that were favorable. If the report is entirely unfavorable, the applicant can choose not to proceed any further, saving a considerable amount of time and money.

What is included in an international application?

The elements of an international application are, in order: a PCT request, description, claim(s), abstract, and drawing(s). Drawings are usually necessary to the understanding of an invention, but certain inventions may not need them.

The request is essentially a petition for the international application to be processed under the PCT. It is similar to the Application Data Sheet that is filed with non-provisional utility patents to the USPTO, but also includes additional items such as the applicant’s choice of International Searching Authority.

The description for an international application is almost identical to the description for any utility application filed with the USPTO. As described by WIPO, “the description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.” There is an accepted order to the (six) sections of the description, which should contain the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention,” and “Industrial Applicability.”

The claims for an international application, like the description, are the same as the claims for non-provisional utility applications filed with the USPTO. As described by the WIPO, “the claim or claims must ‘define the matter for which protection is sought.’”

Drawings are included in an international application when they are required. As described by the WIPO, drawings must be included “when they are necessary for the understanding of the invention.” It is also important to note that any designated Office may require the applicant to file drawings during the National Phase, even if they weren’t required during the International Phase.

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Marin Cionca, Esq.

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USPTO Reg. No. 63899

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