PCT Process: Everything You Need to Know
The PCT process, or patent cooperation treaty process, is the procedure used to apply for patent protection for your invention in multiple countries. You can either apply directly in each country where you want protection or file a PCT application, which covers multiple countries.3 min read
2. What Are the Advantages and Disadvantages of the PCT?
3. How Does the PCT Process Work?
The PCT process, or patent cooperation treaty process, is the procedure used to apply for patent protection for your invention in multiple countries. You can either apply directly in each country where you want protection or file a PCT application, which covers multiple countries. The best route for your invention depends on your funding stage, the maturity of your new technology, how soon you want patent protection to take effect, and whether you have already identified target markets.
If you want to commercialize your invention in the short-term, it is often best to file direct applications in each of your target nations. If you are still in the funding and development phase, a PCT application is likely your best bet. This application can be used by major research institutions, corporations, and universities as well as by small businesses and sole proprietors.
What Is a PCT Application?
This application serves as a placeholder to establish an official patent filing date for your invention. The patent can then later be nationalized in any of more than 140 member countries. You can either file the PCT first or after filing a provisional application in the U.S. or another nation.
In most jurisdictions, you have at least 30 months to nationalize your patent after filing the PCT. Patents are limited by territory. You have several options if you want to protect your invention from infringement in more than one nation:
- With the direct route, sometimes called the Paris route, you file separate applications in each country where you want protection. In some areas, regional applications that cover more than one country may be available. If you file in a member state of the Paris Convention, you benefit from the filing date for the first nation in all other member nations when you file within 12 months.
- If you file an application under the PCT, your filing date is valid in all member states, creating a simpler and more cost-effective protection process.
What Are the Advantages and Disadvantages of the PCT?
The PCT offers a range of advantage for applicants, the public, and the patent processing staff. These advantages include the following:
- You'll have an additional period of 18 months to consider seeking patent protection in specific nations, prepare the necessary translations, and pay required fees.
- The international application cannot be rejected by the PCT contracting state office during the national application processing phase.
- You'll receive valuable information about the patentability of your invention from the international written opinion and search report.
- You will have the opportunity to amend your application, argue your case with the examiner, and make adjustments during the international preliminary examination phase.
- Other patent offices can largely rely on the international search report and written opinion, thus streamlining the processing phase.
- In contracting states with PCT-Patent Prosecution Highway agreements, you may be able to fast-track the examination phase.
- Your invention receives international public notice and can be highlighted on PATENTSCOPE, allowing you to advertise to potential licensees.
- You will save time and money on document preparation and communication.
- If your invention is not patentable, you will have saved the costs of seeking direct protection in foreign nations.
Despite these advantages, PCTs have a few disadvantages, notably higher overall costs and a longer processing time than individual foreign patent applications.
How Does the PCT Process Work?
First, file the PCT application and specify International Search Authority (ISA) as the patent office. If your application complies with all requirements, it serves as a national application in all PCT member states. You can also adhere to certain formal requirements that ensure that you can more easily adapt your patent application to the specific, formal requirements of each nation.
At least one of the applicants must be a resident or national of a PCT contracting state. That is the nation in which your PCT application should be filed. You can also file a PCT directly with the World Intellectual Property Organization (WIPO) if your nation's security provisions permit you to do so.
In most cases, the PCT can be filed electronically. This can be done using the WIPO web service.
If you need help with seeking PCT protection for your invention, 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.