PCT INTERNATIONAL PATENT PROTECTION OVERVIEW

The Patent Cooperation Treaty (PCT) procedure consists of two main phases. It begins with the filing of an international patent application and ends with the grant of a number of national and/or regional patents: hence the customary terms “PCT international phase” and “PCT national phase.”

THE PCT INTERNATIONAL PATENT PHASE

The PCT International Patent Phase consists of four main steps of which the first three occur automatically and the last is optional for the applicant. The first three steps consist of the filing of the international application by the applicant, the establishment of the international patent search report and written opinion by one of the International Patent Searching Authorities, and the publication of the international patent application together with the international patent search report. The third step includes communication of the published international patent application and the international patent search report, as well as the international preliminary report on patentability (Chapter I of the PCT), by the International Bureau of WIPO to the national (or regional) Patent Offices which the patent applicant wishes to grant him a patent on the basis of his international patent application.

The optional fourth step involves what is known as international preliminary patent examination (Chapter II of the PCT), and is concluded with the establishment of the international preliminary report on patentability by one of the International Preliminary Patent Examining Authorities. The international preliminary report on patentability analyzes aspects of the general patentability of the invention.

THE PCT NATIONAL PHASE

To enter the PCT National Patent Phase, the applicant has to pay to those Patent Offices the required national (or regional) fees, furnish them with any translations that are required and appoint a representative (patent agent) where required. There are time limits by which those steps must be taken if the application is to proceed in the PCT National Patent Phase. If the steps are not taken within the applicable time limit, the effect of the international application may cease in any State where the time limit has not been met. The national (or regional) Patent Offices then examine the patent application and grant or refuse the national patent on the basis of their national laws or regional patent system treaties. (Reference to “national law” is also a reference to a regional treaty such as the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement.)

It is up to the applicant to decide whether and when to enter the PCT National Patent Phase before each national (or regional) Patent Office. The PCT International Patent Phase continues, for any particular State, until entry into the PCT National Phase before the national (or regional) Office concerned or until the expiration of the applicable time limit for entering the PCT National Phase before that Office. Since the PCT National Phase may be entered before different Offices at different times, the international application may simultaneously be in the PCT International Phase for some States and the PCT National Phase for others. Where the PCT National Patent Phase processing or examination has begun before a particular Office, any actions taken on the international application remaining in the PCT International Patent Phase have no effect on the proceedings before that Office.

PCT SYSTEM ADVANTAGES

The PCT system offers many advantages.  Use of the PCT saves effort—time, work, money—for any person or firm seeking protection for an invention in a number of countries. Use of the PCT also helps the applicant to make decisions about the prosecution of the application before the various national Patent Offices in the national phase of processing. The saving arises primarily from the fact that, under the PCT, the applicant files one application—the international application—in one place, in one language and pays one initial set of fees, and that this international application has the effect of a national or regional application, which, without the PCT, he would have to file separately for each country or region.

The help to the applicant in the national phase prosecution of the application follows from the “advice” he obtains from the international search report, a report which is established for each international application, according to high, internationally regulated standards, by one of the Patent Offices that are highly experienced in examining patent applications and that have been specially appointed to carry out international searches.

The PCT System offers many advantages, however, the procedural requirements and patent application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on the PCT, consult a registered patent attorney qualified to assist you in international patent filing matters.

Consult A PCT International Patent Attorney

Whether you’re an established company or an individual entrepreneur, protecting your patentable inventions and proprietary technology should be a top priority. Without patent protection, technology improvements may be compromised resulting in lost profits and opportunities.

The Washington, DC law firm of McNeely, War & Hare LLP has patent attorneys that can handle the various matters that can arise in development and ownership of a patent portfolio. Call (202) 274-0214 (D.C.), (609) 240-2533 (MD), or contact us online to schedule an initial consultation now.