PCT Basics: Understanding the International Filing Process
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Nov 3, 2011 @ 6:25 pm
The Patent Cooperation Treaty, or the PCT as it is typically referred to, came into existence in 1970, and has been subsequently several times. It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). The Treaty, which like any other Treaty is a legal agreement entered into between various countries. The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries. By filing through the PCT process you can embark on the path to seek patent protection for an invention simultaneously in every country that is a member to the Treaty. You accomplish this by filing an “international patent application.” Indeed, the term PCT is largely synonymous with “international patent application.” So you will sometimes hear people talk of filing an international patent application or a PCT application.
An international patent application may be filed by anyone who is a national or resident of a Member Country. A Member Country, also referred to sometimes as Contracting States, are simply those countries that are members to the international Treaty. In PCT speak, which can sometimes seem to be a language all to its own, those countries that have ratified the Patent Cooperation Treaty are referred to as Member Countries or Contracting States.
The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.
First, it is probably worth explaining that there is no such thing as an international patent, which is one of the things that causes international protection to be quite costly. Eventually if you want to obtain a patent in a particular country your international patent application will need to somehow mature into some kind of patent filing in each country where you wish to obtain a patent. This can be accomplished through the PCT process by entering the so-called “national stage” in the countries where you want to receive a patent, or you can file a patent application claiming the benefit of your international patent application directly in a particular country within 12 months of filing your international patent application.
It is necessary to seek patent protection in each country because individual countries issue patents. The international process is just a convenient, uniform process that allows applicants to start down the road toward patent protection in any number of jurisdictions without the need to make a unique application filing in multiple countries.
The PCT procedure consists of two main phases. As already mentioned, the first phase begins with the filing of an international application. The second phase begins with the international application entering into any number of countries to be evaluated under the patent laws in force in each particular country where you want a patent. Thus, there is said to be an “international phase” and a “national phase” to the PCT process.
The international application must be filed in an authorized Receiving Office. The Receiving Office functions as the filing and formalities review organization for international applications. But that still begs the question: What is a Receiving Office?
The Patent Offices of the countries that are members to the PCT are called Receiving Offices. You cannot simply file an international patent application in any Patent Office, but rather you need to file in the appropriate Receiving Office. Where there are several applicants who are not all nationals and/or residents of the same country, any Receiving Office where at least one of the applicants is a resident or national is authorized to receive an international application filed by those applicants. Alternatively, the international application may be filed with the International Bureau as the Receiving Office. In the United States, the U.S. Patent and Trademark Office acts as a Receiving Office for United States residents and nationals, but the International Bureau of the World Intellectual Property Organization may also act as a Receiving Office for U.S. residents and nationals.
In the U.S. inventors need to know that if the invention was conceived of in the United States it will be necessary to obtain a foreign filing license before filing a patent application outside the U.S. If you file a patent application with the United States Patent and Trademark Office you have implicitly requested a foreign filing license, and ordinarily one will be automatically granted in the filing receipt you receive from the USPTO. If you do not receive a foreign filing license grant at that time it is likely that individuals at the Pentagon are reviewing your application to determine whether it raises a matter of national security warranting the imposing of a secrecy order. Secrecy orders are quite rare, but you cannot file overseas without a foreign filing license. If one is not granted explicitly you acquire one through the passage of 6 months time by operation of law. Thus, if a secrecy order will be imposed it will be done within 6 months of your application being filed.
The rule is that a license for foreign filing is not required to file an international application in the United States Receiving Office but may be required before the applicant or the U.S. Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign authority. So how then can one file directly with the International Bureau as the Receiving Office? When no corresponding national or international application has been filed in the United States and you want to use the International Bureau as the Receiving Office and the invention was conceived in the United States, you must petition for a foreign filing license under 37 C.F.R. 5.13. A petition for license should be in letter form and must include the fee, the petitioner’s address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner and must also be accompanied by a legible copy of the material upon which a license is desired.
So why is the PCT process so popular? Aside from being cheaper to initiate compared to filing in every Member Country, which would be unthinkably expensive, you have up to 30 months to actually decide which countries where you to receive a patent. PCT timelines are tied to the initial priority date of the application, not necessarily the filing date of the international patent application. But let’s say that your international patent application is the first one you are filing and it claims the benefit of no priority from an earlier filed patent application. In this scenario you have 30 months from the filing date of the international patent application to decide which countries you want a patent in. Said another way, you have 30 months to enter the national stage in countries where you want a patent. Had you filed first in United States, for example, you could have filed an international application claiming the benefit of that earlier filed U.S. application for up to 12 months. So if you filed in the U.S. on November 3, 2011 and filed a PCT application on or before November 3, 2012, you would have to make your national stage decisions within 30 months from the initial U.S. filing, or on or before May 3, 2014. In this regard the PCT is favored, particularly when you don’t know whether you will ultimately want or need broad based international protection. You can decide later after the invention and the market has developed and matured.
Generally it is said that if you know where you are going to want a patent it is cheaper and quicker to file directly in those countries. It is certainly quicker because you do not spend time in an international phase and go directly into the examination queue. It is also cheaper because you do not spend money on the international phase. Furthermore, while the initial filing fee for an international application beats filing in every country, it isn’t exactly chump change either. So if you know where you want a patent you can cut out the international filing fee and the international stage fees. Of course, you don’t get the benefit of starting down the path to secure worldwide rights either.
It is difficult really to give much general advice on when the PCT process is best. It is probably fair to say that the PCT process is most popular with and best suited for large multi-national corporations who routinely seek patents in many jurisdictions, such as Pharmaceutical companies for example. The PCT process is also likely advantageous when there is a clear global need and likely markets exist around the world. The PCT process is likely out of the reach and unnecessary for independent inventors in all but the most rare cases. Additionally, since a U.S. patent provides you the ability to prevent importation into the United States, if the U.S. is the primary market you really do not need a patent overseas where the product will be manufactured. Of course, if you are considering filing a patent application it is always advisable to speak with a patent attorney to get custom advise on filing strategies.
There is much to write and explain about the PCT process. This merely touches the very tip of an enormous iceberg. For more on the PCT see:
- PCT Resources from the World Intellectual Property Organization
- PCT Legal Administration from the USPTO
- Chapter 1800 of the MPEP, titled Patent Cooperation Treaty
- Patent Cooperation Treaty Article Archive on IPWatchdog.com
Please also check back as I continue to unveil our PCT Basics series.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.