Do you want international protection for your invention? A patent application filed under the Patent Cooperation Treaty (“PCT”) is the best route to obtain international protection. Specifically, the Patent Cooperation Treaty is an international treaty with more than 145 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
The PCT Process
- Filing: When you file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees, you are “filed.”
- International Search: An “International Searching Authority” (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.
- International Publication: At or after the expiration of eighteen months from the earliest filing date, the content of your international application is publicly disclosed.
- Supplementary International Search: A second ISA can identify, at your request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields. The supplemental international search is optional.
- International Preliminary Examination: An ISA can carry out an additional patentability analysis, usually on an amended version of your application. The international preliminary examination is optional.
- National Phase: After the end of the PCT procedure, typically at 30 months from the earliest filing date of the first application filed, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
Foreign Protection Options
Direct Filing: You can directly file, under a treaty called the “Paris Convention,” separate patent applications at the same time in all of the countries in which you would like to protect your invention (for some countries, regional patents may be available) or, having filed in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of claiming the filing date of the first application. If there is a utility provisional patent application, the direct filing of a patent application should be filed within the 12-month deadline in order maintain the priority date of that provisional patent application.
PCT Patent Application: You can file a patent application under the PCT, as discussed above, directly or within the 12-month period provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT and, therefore, simpler, easier and more cost-effective than both, direct or Paris route filings. If there is a utility provisional patent application, the PCT patent application should be filed within the 12-month deadline in order maintain the priority date of that provisional patent application.