PCT Filing Timeline: Everything You Need to Know
The PCT filing timeline refers to the Patent Cooperation Treaty, which is an international agreement with more than 150 contracting states.3 min read
The PCT filing timeline refers to the Patent Cooperation Treaty, which is an international agreement with more than 150 contracting states. Through the PCT, an inventor can file a single international patent application to get a patent in a large number of countries at the same time. Without the PCT, the inventor would have to file separate patent applications for each country or region where it needs protection.
National or regional patent offices still have control over what patents are granted; this is referred to as the “national phase.” In order to file according to the PCT, an inventor must follow certain steps.
Step 1: File
The inventor must file an international application with a national patent office, follow the PCT requirements, and pay the fee.
Step 2: Perform an International Search
After the application has been filed, a large global patent office known as an International Searching Authority, or ISA, uses the patent forms and technical literature to determine if an item is eligible to receive a patent. The ISA then releases a written opinion stating if an invention is patentable.
After the report and opinion have been released, the inventor can file an amended claim or informal comments. If an inventor wants to challenge the findings, they can file a demand. If the inventor chooses not to appeal the decision, the opinion is then turned into the item's International Preliminary Report on Patentability.
A demand must be filed 22 months from the priority date and three months from the release of the written opinion. Any amendments or arguments have to be filed by the same deadlines and are typically filed with the demand. A demand that is submitted after the deadline is treated as if it was never submitted. There are minimal opportunities to withdraw a demand and to have the fee refunded.
Step 3: International Publication
The international application is released to the public soon after expiration of the 18 months from the earliest filing date.
Step 4: Optional Supplementary International Search
If an inventor wants to look for additional documents, they can request a second ISA that will look for items not found by the first ISA.
Step 5: Optional International Preliminary Examination
The inventor can also request a second patentability analysis by one of the ISAs. This typically happens by amending the original application.
Step 6: National Phase
The last step of the PCT process is to seek patents directly from each national or regional patent office. This usually takes place 30 months after the earliest filing date on the application.
Protecting Inventions in Multiple Countries
Because patents are limited to where they are issued, an international patent doesn't exist. However, there are options for people who want to protect their inventions in multiple countries.
They can file separate patent applications directly with each patent office at the same time. If they filed an application in a Paris Convention country or one of the Member States of the Paris Convention for the Protection of Industrial Property, they can then file a separate patent application for the other Paris Convention countries inside 12 months of the original filing date. The advantage of this method is that the secondary applications can still use the original filing date of the first application.
The other option is to complete an application through the PCT that is valid in all contracting states of the PCT. The application can be filed directly or within 12 months of the first application. This method is easier and less expensive than filing with each country directly or through the Paris Convention countries.
Who Uses the PCT?
The PCT is used by groups or individuals trying to secure patent protection internationally, including:
- Major global corporations
- Research groups
- Small and medium enterprises
- Individual inventors
An annual list of the largest PCT filers is published in the PCT Newsletter.
What Does a PCT Application Do?
Instead of filing individual patent applications with each country's office, the PCT application provides the same information and starts the application process with one form. An added benefit of a PCT application is that inventors who follow the treaty and regulations are not required to change the application to meet different national requirements.
If you need help with a PCT filing timeline, you can post your legal need 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.