PCT Path To International Patents

A patent application filed under the Patent Cooperative Treaty (PCT) is often referred to as an international patent application and is governed by the World Intellectual Property Organization (WIPO). Filing a PCT application can be a cost and time saving process allowing an inventor to file in one language, and in only one country, in order to simultaneously become patent pending throughout the industrialized world. A word of caution, a PCT cannot be filed on a Provisional or Design application.

Because there is no single international patent, the actual granting of foreign patents are much more complicated involving procedures and timelines set forth by each country. It is common for countries to require language translations and the hiring of a local patent representative to handle final prosecution and issuance matters. At the time of this writing, 146 countries are members of the Patent Cooperative Treaty.

A PCT application first goes into an “International Phase” where an international search is performed. From the search, a prior art report is prepared and provided to the applicant. After 18 months of pending, the patent application along with the search report is published and transmitted to the designated world Patent Offices. If the inventor requests (most do not), the PCT application could be examined by a member Patent Office resulting in a non-binding Opinion of Patentability which is sent to the applicant in order to better assess the merits of pursuing patent protection in certain countries and/or regions.

“National or Regional Phase” is the second of the two PCT stages. This phase is where individual countries or regions are selected, the separate national filing fees are paid, translations (where necessary) of the patent applications are done, and licensed Patent Attorneys/Agents are hired. By this time, 30 months after the earliest filing date, the inventor and his patent counsel will have increased insight into the legal, technical and marketing prospects of the invention and whether it is worthwhile to continue trying to acquire patent protection in one or more countries.

Filing a PCT application and receiving a de facto “international patent pending” has become a popular choice for inventors with inventions having international marketing potential. A PCT filing will protect an inventor’s ability to obtain patent protection in foreign countries, while deferring the selection of countries and the payment of the associated costs for up to two and half years without obligation. As the world grows smaller, a PCT is an option inventors should carefully consider.