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An Overview of the PCT International Patent Process

Written by Jeffrey Shieh
Senior Patent Attorney, inovia
Posted: August 18, 2011 @ 1:32 pm
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Recently, Gene Quinn gave an overview of the U.S. patent process from start to finish. For many applicants, however, it’s not enough to merely protect their technology in the U.S. alone. With today’s global industries and markets, foreign patent protection is an essential part of IP strategy. So how does an applicant go about obtaining a foreign patent?

Patents are geographically limited. For example, a US patent gives you rights only in the US. To pursue international patent protection, you typically start by filing a “priority” patent application in your home country. This can be a regular patent application, or a provisional application in countries like the US and Australia. Either way, this “priority application” serves as a placeholder for any future international patent applications.

A common way of pursuing patent rights outside your home country is to file an international-type patent application called a PCT application (“PCT” stands for Patent Cooperation Treaty). A PCT can be filed up to 12 months from the priority application’s filing date, and reserves your right to enter over 140 countries that are members of the PCT.

Entering the national phase

A PCT application doesn’t automatically lead to global patent protection. Instead, you eventually need to apply for patents in each of the countries and regions where you wish to pursue patent protection. This involves filing separate applications at the “national stage”, which occurs 30 months (31 months in some countries) after the priority application’s filing date.

Each country or region has its own set of requirements and deadlines for PCT national stage filing. For further country-specific details, please feel free to download inovia’s PCT national phase entry e-kit.

After national stage entry, your patent application will be examined in each country. During prosecution, if the patent office finds earlier inventions (prior art) that are similar to your invention, you and your foreign attorney will need to respond and explain how your invention is different. You can make amendments (within reason) and submit arguments.

Assuming you resolve all of the examiner’s objections, your patent is “allowed”, and you may need to pay some printing and grant fees. In general, all that remains afterwards is to keep your patent protection “alive” by paying maintenance fees, also known as annuities.

Validating a European patent

Obtaining patents via the European Patent Office involves an additional step known as European validation.

To pursue patent protection in Europe, you typically file a single European patent application with the EPO. You can do this via the PCT process. This application, by default, designates all of the European contracting states. After filing, your European patent application is examined by the EPO. Your European attorney will then exchange correspondence with the EPO until any objections have been resolved.

Once the European examiner’s objections have been resolved, the EPO will issue a Notice of Intention to Grant (also referred to as a 71(3) notice). This gives your European attorney four months to lodge a translation of your claims into English, French and German, and pay printing and grant fees to the EPO.

Once this is complete, the EPO will grant your patent. The formal Decision to Grant your European patent is published in the European Patent Bulletin. You have three months from that publication date to validate your patent in the individual European countries where you want protection.

It’s important to note that your European patent will only extend to those countries in which you choose to validate the patent. The rights will lapse in any countries where you don’t validate.

What is validation?

The exact process of validation differs in each country, but generally involves paying a fee and (where necessary) lodging a translation of either the claims or the entire patent specification. It is also usual to record a local address for service in the individual countries.

Each European contracting state has its own requirements for validation. Download inovia’s European validation e-kit for more information on the filing specifics of each country.

Once validated, you do not need to go through any further prosecution in the individual European countries. Your patent will remain active as long as you continue to pay the yearly annuities.

About the Author

Jeffrey Shieh is a Senior Patent Attorney at inovia.

For more information on foreign patent filing, subscribe to inovia’s Foreign Filing Blog and follow inovia on Twitter @inoviaIP.

5 comments
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  1. For other practitioners -, how many countries does a client have to be filing in until your recommend going the PCT route?

  2. Gene which ISA do you choose, USPTO or EPO? And do you react to the written opinion from the international search authority (the “WO-ISA”) in order to get an IPRP that is positive on patent-eligibility and patentability? Or do you defer all active prosecution till after you enter the national phase?

    Would you say that filing a PCT is in effect paying for a 30 month long “option” to a) pursue a patent in up to around 200 countries while you b) arrange finance on the basis of the (hopefully) encouraging WO-ISA?

  3. It would be instructive to note the cost schedule involved.

  4. Hi Michael, In my experience, if the client is interested in filing into 3-5 countries, it is usually more cost-effective to file via the PCT. Of course, this depends on which countries the client ultimately files. Additionally, besides the cost savings, there are other advantages that the PCT route offers, such as time delay and flexibility. For example, if your client is unsure whether to file into a certain country, the PCT provides them time to make an informed decision and keeps the door open for filing into over 140 countries/regions.

    Hello Anon, The client portal on our website offers a one-click estimate tool where you can generate instant, highly accurate quotes for PCT national stage filings and European patent validation for a specific PCT application or European patent. The link to register for a free account is located on the upper right corner of our homepage http://www.inovia.com. inovia also has created a Post-National Stage Cost Guide which provides a timeline of costs one can expect once the application has entered the national stage in 30 of the most popular filing destinations. Feel free to email me at jeffrey.shieh@inovia.com if you would like a copy of this Guide.

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