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The Patent Cooperation Treaty (PCT) offers patent protection for inventions in over 150 nations around the world with just one international patent application.7 min read
Patent Cooperation Treaty: What Is It?
The Patent Cooperation Treaty (PCT) offers patent protection for inventions in over 150 nations around the world with just one international patent application. Filing with the PCT is an important part of how to patent an idea since it helps inventors seek international patent protection for their inventions and intellectual property. Inventors can file an international patent application with one or more Contracting States. If they receive approval, they will have patent protection in several countries at the same time.
It's a multi-national agreement that dates back to 1970. The World Intellectual Property Organization (WIPO) manages this treaty, which includes over 151 countries around the world. These countries are known as PCT Contracting States.
Advantages of the Patent Cooperation Treaty
- International Patent Protection
Patents only apply to limited areas. If you file a patent application with the United States Patent and Trademark Office (USPTO), it only protects your invention in the United States. With a PCT application, you can make your patent go further. This is important if your company makes or sells products in other countries.
- Simultaneous Patent Protection
Sometimes applying for a patent in the U.S. makes it impossible to get protection in other countries. The PCT lets you protect your inventions in more than one country at once.
- Streamlined Application Process
Applying for patents in individual countries can be time-consuming and expensive. You might have to amend your application for several different countries. The PCT streamlines the application process and helps you save money. You might even find out that your invention is not patentable overseas. Knowing this will help you save money that you might have spent on filing additional patent applications.
- Potentially Faster Application Process
If you need a patent quickly, you might also be able to expedite your international patent applications. Some Contracting States have PCT-Patent Prosecution Highway agreements. These offer faster service. Your USPTO application might receive approval more quickly, too.
- Strong Basis for Patenting Decisions
During the PCT application process, you'll receive a written opinion and an international search report. These are very important because they give you a strong case for the patentability of your invention. If the report and opinion are good, you can usually get international patents very easily.
- Global Patent Search
When you file a patent application with the USPTO, the patent search usually covers inventions patented in the U.S. only. When you file an application under the PCT, the patent search is global. A PCT application will help you understand how patentable your invention is around the world, not just in the U.S. This could change your mind about patenting or marketing your invention at all.
Disadvantages of the Patent Cooperation Treaty
- Lengthy Application Process
The PCT application process doesn't move quickly. If you only need to file a patent application in one other country, you can consider filing it with the individual country directly. If you file in a Paris Convention member country, you should do so within 12 months of your original patent application filing date.
- High Costs
The PCT process is designed for companies with a global outlook. If you do business in just one other country, you can save money by filing a patent application directly with that country. This way you can save the additional cost of the PCT application.
- Limited Patent Coverage
Applications filed under the PCT only apply to utility patents. If you need to patent a design, you can't use this process. File a patent application with the individual countries instead. You also can't patent a logo or a work of art with this process. File a trademark or copyright application instead.
- Thinking of a Patent Cooperation Treaty Application Like an International Patent Application
A true international patent doesn't exist. The PCT only opens the door to global protection for your intellectual property. After your PCT application is approved, you still have to apply for protection with national patent offices.
- Assuming That Patent Law Is the Same Around the World
Patent law and its enforcement is different in every country. If you file your application through the PCT, you will have an easier time working through the differences. If you file applications directly with individual countries, you might have to make big changes to get your patent approved everywhere.
- Deciding Not to Hire an Attorney
Applying for international patents is expensive. Since the process can get very complicated, though, you will likely need legal help. Think about hiring a lawyer at the beginning of the application process. You'll get experienced help when you need it. Doing so will also ensure that your application and filing fees aren't wasted.
Keep in mind that you will probably need to hire attorneys in each country where you apply. This is usually necessary during the foreign prosecution process.
You must file an international patent application within 12 months of your original filing date. This allows you to claim priority of your original filing. That means patent publications or product sales that happen in the meantime don't affect the outcome of your application.
Frequently Asked Questions
- What Language Can I Use for My Application?
You can write in any language that the receiving office accepts.
- Who Uses the PCT?
The PCT is most commonly used for groups that want to seek international patent protection. These groups include:
- Major corporations of the world
- Research institutions
- Small- and medium-sized enterprises (also known as SMEs)
- Individual inventors
If you'd like to see a list of the largest PCT filters, you can look at a list in the "PCT Newsletter."
- Who Can File an Application Under the Patent Cooperation Treaty?
Citizens and residents of PCT Contracting States can file patent applications. You can submit a joint application with other inventors. Only one of you has to meet this residency requirement.
- Where Do I File a Patent Cooperation Treaty Application?
You can usually file with your national patent office. You can also file directly with WIPO. These are all considered receiving offices.
- Do I Have to Submit a Paper Application?
No, most people file electronically. Use the WIPO electronic filing website to do this. You will also receive a filing fee reduction.
- How Do I Get Priority Filing?
You have one year after the U.S. filing date to try to get priority filing in other countries. Filing in another country within that time period will have a beneficial effect. The PCT will count your U.S. filing date as your filing date in other countries as well.
This works a little differently if you have a provisional application. The one year period will begin on the date that you filed the provisional rather than the date that you filed the patent originally.
- Does It Matter Where I File First?
In most countries, the answer is yes. However, these rules depend on the country. Some countries have a rule that you must file in your home country before filing elsewhere.
This is true in the U.S. where you must apply for a foreign filing license before you file elsewhere. You get this license by filing a patent application in the U.S. Do your research. Talk to your attorney to make sure you don't break any laws or hurt your chances of receiving a patent.
- How Much Does Patent Cooperation Treaty Application Cost?
You will probably spend $4,000–5,000 for your PCT application. Most of this money will go toward government filing fees. The PCT application includes the following fees:
- International Filing Fee: 1,330 Swiss francs
- Search Fee: from 150 to 2,000 Swiss francs
- Transmittal Fee: this is nominal and depends on the receiving office
- National Filing Fee: depends on the nation(s) where you file
- How Long Does the Patent Cooperation Treaty Process Take?
You will usually receive approval 30 months after your original filing date. At this time, you can begin the national phase of the process. You will have a prescribed time limit for this phase. The PCT application will stop having the effect of a national or regional application if entry is not completed in time.
Steps to File a Patent Cooperation Treaty Application
1. File a PCT Application
Fill out and submit a PCT application. You can do this at the main WIPO office or at some national patent offices. This includes the USPTO and the European Patent Office (EPO). You should also pay the necessary fees at this time. A PCT application should include:
● The Request: This includes a general petition, a Contracting State designation, the applicant's name, and the title of the invention.
● The Description: This explains your invention. It's similar to the description in your original application.
● The Claims: These should be clear and concise. They're similar to the claims in your original application.
● The Drawings: These should clearly depict the invention from several angles. These are similar to the drawings in your original application.
● Claiming Priority: This reflects any priority that you have from earlier applications.
2. Complete an International Search
The International Searching Authority (ISA) does a global patent search. This is similar to the patent search you did for your original USPTO application. You'll receive a written opinion that states how patentable your invention is. You will also receive an international search report that mentions related patents and inventions.
3. Announce Your International Publication
At 18 months from your original filing date, the application becomes public. After this, anyone can read the content of your patent application on PATENTSCOPE. This is a database that people around the world can search.
4. Do a Supplementary International Search
At your request, the ISA will do a second global patent search. This may cover different languages and technical fields.
5. Ask for an International Preliminary Examination
If you amended your application, you might need to ask for an International Preliminary Examination. This is a second chance to get approval for your application.
6. Enter the National Phase
At 30 months from your original filing date, the PCT application process ends. Next, you'll enter the national phase. Use your international search report to get patents in the countries where you do business.
7. Complete Foreign Prosecution
You must prosecute your application in each country where you want a patent. You'll need to work with foreign attorneys. You might have to pay fees to prosecute in each country.
If you need help with the Patent Cooperation Treaty, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.