PCT Patent: Everything You Need to Know
The PCT is a global treaty that makes it possible to ensure safety of a patent or an invention concurrently in many international locations.8 min read
What is the Patent Cooperation Treaty (PCT)?
The PCT is a global treaty comprising over 145 Contracting States. The PCT makes it possible to ensure safety of a patent or an invention concurrently in many international locations by submitting a single “worldwide” patent request instead of a number of separate nationwide or regional patent applications. Granting patents is under the management of the nationwide or regional patent Workplaces in what is known as the “nationwide section”. The PCT formed in 1970, and it has been subsequently exploited on a number of occasions. It became available to the state public officials following the Paris Conference for the Safety of Industrial Property (1883).
The Treaty is an authorized settlement between varied international locations. The aim of the PCT is to streamline the preliminary submission of an invention, making it simpler and less expensive up front to file a patent in many international locations. The PCT is basically synonymous with “worldwide patent software.” Therefore, you'll generally hear individuals discuss the submission of a global patent software or a PCT software. It is very important to realize that getting worldwide patent safety does not come at low-cost. It is also crucial to understand that the worldwide patent software you file will not become a global patent.
There is no such thing as a global patent, which is among the issues that cause worldwide safety to be fairly pricy. Ultimately, if you wish to acquire a patent in a specific nation, you must apply for a patent in every nation where you want to acquire a patent. Acquiring a single patent in almost 200 international locations on this planet may cost an estimated $1,000,000 and another $1,000,000 for the lifetime upkeep of the patent.
What is a PCT Used For?
The PCT can be used to reserve the submission of your patent to specified international locations and allows you to delay your application for as long as two and a half years. This allows you to contemplate about international locations in which you want to file it. After that time, the PCT enables candidates to specify the nations and jurisdictions where the patent safety is required without the need to submit different applications for various international locations.
The PCT process consists of two fundamental phases. The first phase begins with a global submission. The second phase begins with filing the worldwide applications that is sent to various international locations to be evaluated based on the patent legal guidelines in specific nations where you desire to safeguard a patent. Thus, there is an “worldwide section” and a “nationwide section” to the PCT. PCT prevent the submission of identical inventions in international member locations.
The PCT utilizes centralized submission procedures whereby a single software filed in a PCT is accepted in a number of (together with all) member international locations. As soon as the application is filed, one of many eligible PCT government agencies will carry out a patent search. When the search is complete, the applicant could then elect to enter what is called "Chapter II" of the method, whereby a PCT government agency evaluates the patentability of the appliance pursuant to the patentability requirements set forth within the Patent Cooperation Treaty. Ultimately, the applicant shall be required to have the patent formally entered into the nationwide patent database of every international location from which the applicant needs patent safety.
How Can I Protect My Invention in Multiple Countries?
Patents are territorially restricted. With the intention to protect your invention in many international locations, you are able to choose Paris route or Direct. You may file separate patent application at one time in all international locations where you want to shield your invention (for some international locations, regional patents could also be obtainable) or file at a Paris Conference nation (one of many Member States of the Paris Conference for the Safety of Industrial Property), then file separate patent applications at different international Paris Conference locations within 12 months from the submission date of the first patent, with the submission date in all these international locations being the date of initial submission. To protect your invention in a number of international locations, you can follow the PCT route. Under the PCT, you may file a patent during the 12-month interval offered by the Paris Conference from the submission date of the primary application, which is legitimate in all Contracting States of the PCT and, subsequently, less complicated, simpler and less expensive compared to Paris route or direct filings.
Who Can Use a PCT?
The PCT is used by the world’s main companies, analytical establishments, and universities to search patent safety worldwide. PCT can also be utilized by small and medium sized enterprises (SMEs) as well as individual inventors.
The PCT process consists of submitting -- you file a global software with a nationwide or regional patent Workplace or WIPO in compliance with the PCT regulations in a single language and pay one set of charges.
What Are the Effects of an International Patent Application?
Your worldwide patent software, assuming it complies with at least the minimum requirements necessary to secure a global submission date, has the same bearing as a nationwide patent software (and sure regional patent purposes) in all PCT Contracting States. Furthermore, those who respect the formal requirements set out by the Treaty and Rules that bind all the PCT Contracting States do not need to make subsequent adaptations to various nationwide (or regional) formal requirement (and the associated fees).
Under the PCT, Who Has the Right to File an International Patent Application?
A world patent could also be filed by anybody who is a national or resident of a Member Nation. A Member Nation, additionally referred to as a Contracting State, refers to an international location that is a member of the worldwide Treaty. In PCT, the international locations that have ratified the Patent Cooperation Treaty are known as Member Nations or Contracting States.
Where Can I File My International Patent Application?
You may file a global patent application along with your nationwide patent Workplace or straight with WIPO, if allowed by your State’s nationwide safety provisions. Each of these Workplaces act as PCT “receiving Workplaces”. If you're a national or resident of a rural area, which is subject to the ARIPO Harare Protocol, the OAPI Bangui Settlement, the Eurasian Patent Conference or the European Patent Conference, chances are you'll alternatively file your worldwide patent software with the regional patent Workplace involved, if permitted by the relevant nationwide regulation.
Alternatively, the worldwide software could also be filed with the Worldwide Bureau as the Receiving Workplace. In the U.S., the U.S. Patent and Trademark Workplace acts as a Receiving Workplace for the United States residents and nationals; however, the Worldwide Bureau of the World Mental Property Group can also act as a Receiving Workplace for the U.S. residents and nationals.
Can I file PCT Applications Electronically?
You may file PCT application electronically at any receiving Workplaces that accepts such filings. The PCT software utilizes the WIPO internet service (ePCT-filing) or the software program offered by WIPO (PCT-SAFE), which allows you to combine your applications by mechanically validating the entered information and modifying incorrectly or inconsistently accomplished components. Furthermore, it allows you to manage various purposes, for instance, by monitoring cutoff dates for related actions. You're additionally entitled to reduced PCT charges when submitting electronically.
What Costs are Associated with Filing and Processing?
PCT candidates usually pay three types of charges once they file their worldwide application: (a) a global submission charge of 1,330 Swiss francs, (b) a search charge which may fluctuate from roughly 150 to 2,000 Swiss francs depending on the ISA chosen, and (c) a small transmittal charge, which varies based on the receiving Workplace. As a result, a global patent software is valid in all PCT Contracting States; thus, you don't incur, at this stage within the process, additional cost associated with filing different applications at nationwide and regional Workplaces.
The charges you have to pay as you enter the nationwide section are probably the most important pre-grant prices. They'll include charges for translations of your software, nationwide (or regional) Workplace submission charges, and costs of hiring native patent brokers or attorneys. In a number of Workplaces, nationwide submission charges for worldwide patent purposes are smaller compared to those for direct nationwide purposes since some of the work has already been completed in the worldwide section. In the case of all granted patents, regardless of whether the PCT is used to acquire them, you have to pay upkeep charges in every nation to maintain the patents alive.
What Are the Fee Reductions Available Under the PCT?
All candidates who file electronically can benefit from PCT charge reductions , based mostly on the kind of submission and the format of the application submitted. To encourage the use of the PCT System by candidates from international locations, 90 percent discount, together with the worldwide submission charge, can be applied based on the individuals’ socio-economic status. Similarly, 90 percent discount applies to any person, regardless of whether he/she is from low socio-economic background, who is resides in and is a national of a State that is classified among the least developed nations by the United Nations.
Some discount is applied if the applicants or candidates are nationals or residents from certain international locations. Some nationwide or regional Workplaces offer discounts for poor individuals, universities, not-for-profit analysis institutes and small to medium-sized enterprises (SMEs) for the charges as a part of the nationwide section.
How Long Can a PCT Process Take?
PCT timelines are tied to the initial date of the application rather than the submission date of the worldwide patent software. However, let us assume that your worldwide patent software is the primary one you're submitting, which does not take precedence over an earlier filed patent. In this case, you have 30 months from the submission date of the worldwide patent application to decide in which international locations you desire to apply for a patent. If you filed first in the United States, for instance, you could file a global software claiming the advantage of earlier filed U.S. software for as long as 12 months.
Thus, those who filed within the U.S. Nov. 3, 2011, and filed a PCT software on or before Nov. 3, 2012, would need to make your nationwide stage choices within 30 months from the first U.S. submission or on or before May 3, 2014. For this case, the PCT is favored, especially if you don’t know whether you'll need or want mostly worldwide safety in the end. You may determine later after the invention, as the market has developed and matured. You have 18 more months from the time of filing your worldwide patent software (or often 30 months from the submission date of the preliminary patent software of which you declare precedence) to start the nationwide section procedures with particular patent Workplaces and to satisfy the nationwide regulations. This extra time could be helpful to evaluate the possibilities of acquiring patents and marketing your invention in the international locations you intend to ensure patent safety and to assess the technical aspects of your invention and the continued need to safeguard your patent in these international locations.
If you need help understanding the Patent Cooperation Treaty (PCT) or assistance applying for a patent, 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.