“Because the Patent Cooperation Treaty allows applicants to defer making a decision where to ultimately seek a patent for 30 months from their initial filing date (i.e., the earlier priority date for the application), it is viewed as quite favorable, particularly for applicants who do not know whether they will ultimately want or need broad based international protection.”
The Patent Cooperation Treaty (PCT) enables applicants to file one application, called an international application, in a standardized format in an authorized Receiving Office, and have that patent application treated as a regular national patent application in all Member Countries to the PCT. The PCT also provides for the establishment of an international search report and written opinion and publication of the international application after 18 months from the earliest priority date.
Timeline and Choice
Aside from being cheaper compared to filing directly in every PCT Member Country individually, which would be unthinkably expensive, the applicant has up to 30 months to actually decide where to receive a patent. This is because: (1) PCT timelines are tied to the initial priority date of the application, not necessarily the filing date of the international application; and (2) applicants have up to 30 months to enter the national stage for all Member Countries except for Luxembourg and Tanzania, which require entry into the national stage within 20 months unless a demand for international preliminary examination has been made.
For example, if an international patent application is filed on January 25, 2021, and does not claim the benefit of any earlier filed patent application, the applicant will have 30 months from the filing date to decide where to ultimately pursue a patent. The applicant received 30 months from the filing date because the international filing date and earliest priority date are the same. Said another way, in this example the applicant has 30 months, or until July 25, 2023 within which to enter the national stage in any country (other than Luxembourg or Tanzania) where a patent is desired.
In a second example, the applicant first files a patent application in Germany on February 26, 2021, which does not claim the benefit of any previously filed application. An international application is subsequently filed on December 30, 2021 claiming the benefit of the earlier filed German application. The applicant will have 30 months from the initial filing (i.e., February 26, 2021) to enter the national stage in any country where a patent is desired, which means the applicant has until August 26, 2023 to enter the national stage.
Because an international filing pursuant to the PCT allows applicants to defer making a decision where to ultimately seek a patent for 30 months from their initial filing date (i.e., the earlier priority date for the application), the PCT is viewed as quite favorable, particularly for applicants who do not know whether they will ultimately want or need broad based international protection. Applicants can decide later after the invention and the market has developed and matured whether they need or want a patent in a particular country or countries.
Pros and Cons
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 cheap. So, if you know where you want a patent you can cut out the international filing fee and the international stage fees. You also don’t get the benefit of starting down the path to secure worldwide rights either.
Of course, it is worth pointing out that, technically, any properly filed application (i.e., with adequate support for the disclosed invention) can be the basis for a priority claim within 12 months under the Paris Convention. Indeed, as pointed out above in the second example, a PCT application can be filed claiming the benefit of whatever earlier (i.e., first) application was filed within the previous 12 months.
It is difficult really to give much general advice on when the PCT process is best. Notwithstanding, it is probably fair to say that the PCT process is most popular with and best suited for large multi-national corporations that 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 also appropriate for anything involving standard essential patents, where a worldwide portfolio is a necessity, and for universities with important, paradigm shifting innovations. The PCT process is likely out of reach and unnecessary for independent inventors in all but the rarest cases.