Patent Cooperation Treaty

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The Patent Cooperation Treaty (PCT) provides various advantages for Applicants who are interested in filing patent applications in multiple countries. Further to the PCT, an Applicant may file a single “international” application and obtain patent protection in one or more of the 142 PCT contracting states (a full listing of the PCT contracting states).

It should be noted that Argentina and Taiwan are not signatories to the PCT treaty. If patent protection is desired in countries which are not signatories to any international patent treaties, an Applicant will likely file in such countries after a first local patent application is filed but prior to the patent applications publication/public disclosure (to avoid loss of rights), and further, after a foreign filing license is received from the USPTO.

A brief timeline highlights the major events that occur during the PCT process:

National Phase/Regional Phase

Although a “single” PCT application is filed, the Applicant is still required to enter the “national phase” (or “regional phase”) within each of the jurisdictions for which patent protection is desired. During the “national phase,” each of the examining offices (of the elected jurisdictions) will examine the patent application and determine whether the invention described therein is patentable.

It should be remembered that because patent rights are geographical in nature (as indicated previously), each respective jurisdiction has its own patent laws which may differ from the patent laws in the United States. Accordingly, certain inventions which are patentable in the United States (e.g., inventions directed to business methods, etc.) may not be patentable in certain international jurisdictions. Thus, prior to entering the National Phase in a particular contracting state, the Applicant should verify that their invention satisfies the subject matter eligibility requirements of said contracting state.

PCT Benefits

A number of benefits may be realized through the PCT process, which are listed as follows:

• Simplifies Patent Procurement Process if Filing in Multiple Jurisdictions: If the Applicant desires patent protection in a number of jurisdictions, the PCT process simplifies the procurement process generally (e.g., avoid having to file certified copies of the priority application with each national patent office, a single “international” application is filed which is prosecuted in each elected national patent office/regional patent system, etc.).

• Search / Patentability Analysis: As indicated above, the Applicant receives an International Search Report (ISR) and Written Opinion (generated by an International Search Authority (ISA)) around 16 months after the filing of the Local Patent Application. The international search report cites patent documents/technical publications related to patentability while the written opinion provides a non-binding opinion regarding the patentability of the subject invention utilizing the documents cited in the international search report. Further, the ISA does not necessarily need to be the Receiving Office in which the PCT application was filed. For example, for a PCT application which was filed at the USPTO (Receiving Office), the following International Search Authorities (ISA) are available (which are the same International Preliminary Examination Authorities (IPEA)): 1) United States Patent and Trademark Office (USPTO); 2) European Patent Office (EPO); 3) Korean Intellectual Property Office (KIPO); and 4) IP Australia (IPAU).

• Claim Amendments During the International Phase: After receiving the ISR and Written Opinion, the Applicant may decide that an amendment of the claims is required prior to entering the national phase. Accordingly, because such an amendment (commonly referred to as an “Article 19 Amendment” which may be accompanied by a brief explanatory statement of the amendment) occurs during the International Phase, the Applicant avoids having to further said amendment in each of the National Phase patent applications. Accordingly, such a feature is value-added for the Applicant as patent prosecution costs are reduced by avoiding duplicative action. As an aside, an Article 19 Amendment cannot include an amendment to the description and drawings of the PCT application, and the Applicant is provided with only a single opportunity to amend the claims of the PCT application during the International Phase unless they file a Demand for International Preliminary Examination (which provides a second opportunity to amend the claims). Further, because an Article 19 amendment is filed within two months from the date of transmittal of the ISR and written opinion, the Article 19 amendment will be included in the PCT application at the 18 month International Publication (which is important for Provisional Rights (35 USC 154(d)) purposes – an article regarding provisional rights will be published soon).

• Application Amendments During the International Phase: If the Applicant believes that: 1) an amendment to the written description, claims (second opportunity), or drawings of the PCT applications is required; or 2) desires another opinion regarding the patentability of their invention (beyond the ISR and written opinion), the Applicant has an opportunity to further the foregoing during the International Phase. The aforementioned amendment is referred to as an “Article 34 Amendment” and requires that a Demand for International Preliminary Examination be filed thereafter (the demand must be filed within 3 months from the transmission date of the ISR and written opinion or within 22 months from the priority date (whichever is later)). The Article 34 Amendment is value-added as it allows the Applicant to reduce patent prosecution costs by avoiding duplicative action (similar to an Article 19 Amendment). The international preliminary report on patentability that results from filing a demand for international preliminary examination is also value-added as it evaluates the patentability of the invention (and considers amendments furthered during the International phase).

• Delay Significant Costs: Costs for entering the national phase in each respective country (e.g., translation fees/national patent office fees/local attorney or agent fees) are generally delayed for up to 30 months from the PCT applications priority date and in some cases even later (see the next list item for further information regarding time limits). During this time period, the Applicant may determine whether (and where) commercial demand exists for the subject invention. If the Applicant realizes that commercial opportunities do not justify the costs of continuing the patent procurement process (either entirely or in certain jurisdictions), the Applicants financial loss is minimized due to the PCT application process. More specifically, had the Applicant instead filed a number of separate patent applications further to the Paris Convention, a number of the aforementioned costs (translation fees/national patent office fees/local attorney or agent fees) would have been incurred upfront (or within a year of the local patent applications filing date). With the PCT process, the Applicant is (usually) provided with at least an additional 18 months of delay (beyond the 12 month priority period) regarding the aforementioned costs.

• Delay National Phase/Regional Phase Entry: The Applicant may delay entry into the national phase for at least 30 months from the priority date of the PCT application for a majority of jurisdictions; however, it should be noted that for a handful of offices the time limit is 20 months. Further, it is vital that time limits be monitored precisely as designated national phase offices DO NOT send reminders. For further information regarding time limits, the reader is invited to review the following WIPO resources: “Time Limits for Entering National/Regional Phase Under PCT Chapters I and II” and “PCT Time Limit Calculator.”

• Improved National Phase Examination: Although the aforementioned reports/opinions are non-binding upon each of the national patent offices, positive patentability findings contained within the aforementioned documents may indicate that national phase patent examination will require minimized correspondence (reduced cost) with each national patent office to obtain a patent grant.

All parts of the PCT application may be amended during the national phase, and a patent agent or attorney located in each of the international jurisdictions (in which the national phase is entered) will likely need to be utilized for prosecuting the PCT patent application.

It should additionally be noted that a number of the contracting states to the PCT are members of regional patent systems, including: the African Intellectual Property Organization (OAPI); the European Patent Convention (EPC); the African Regional Intellectual Property Organization (ARIPO); Eurasian Patent Organization (EAPO). (see MPEP 1817 – PCT Member States). Further, certain contracting states which are members of one of the aforementioned regional patent systems may allow entry into a national phase or a regional phase, while others may only allow entry into a national phase (e.g., “Either national patents or European patents for member States are available through PCT, except for Belgium, Cyprus, France, Greece, Ireland, Italy, Monaco, Netherlands, and Slovenia, for which only European patents are available if the PCT is used” – MPEP 1817).

Further information regarding PCT applications may be found here: World Intellectual Property Organization (WIPO) | PCT Resources and USPTO – PCT Legal Administration.