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International Patent Protection via the Patent Cooperation Treaty (PCT)

By: Christopher Heer, Annette Latoszewska | Last updated: March 19, 2020
The Patent Cooperation Treaty (PCT) now has 152 contracting states. The treaty enables individuals looking to protect their invention in multiple jurisdictions to initiate that process with a single application filing.

An applicant that does not take advantage of the PCT is required to submit individual applications to the patent office in each jurisdiction in which they wish to acquire patent rights, with each of these filings being subject to fees in different currencies and to a strict 12-month deadline from the first filed application.

Although only one application is required, an applicant that has filed a PCT application is still required to prosecute the application in each individual jurisdiction – the PCT does not amount to an application for an international patent.

The process can be considered in two phases, the international phase and the national phase, both of which are set out in more detail below.

The International Phase

To initiate the international phase, the PCT application is first filed with a national or regional patent office or the World Intellectual Property Organization (WIPO). The PCT application can be filed as a first application, or within 12 months of another application from which priority is claimed.

Since only one application is filed, one advantage of the PCT is that only one set of formal requirements needs to be complied with. Individual countries cannot reject an application that complies with those requirements on formal grounds. The PCT application is also filed at this stage in only one language and is subject to only one set of fees in a single currency.

After filing, the PCT application is transmitted to an International Searching Authority (ISA) and to the International Bureau (if filed with a national or regional receiving office). The ISA then conducts a search for prior art which may influence the patentability of the invention applied for.

The contracting states to the PCT have appointed several national patent offices as ISAs, and the ISA that conducts the search will depend on the receiving office with which the application is first filed. If filed with the Canadian Intellectual Property Office (CIPO), that same office will serve as the ISA.

The results of this search are provided in an International Search Report (ISR) and specific comments on patentability are included alongside the report in the Written Opinion of the ISA. The ISR and Written Opinion must be established no later than 9 months from the priority date.

The search report and opinion provide useful information on the potential patentability of your invention and may help you decide whether to continue with your application, or flag ways in which your application may be amended and strengthened in light of the prior art. It may also help gauge the investment your subsequent national phase applications will require.

If your application is objected to in this phase, this may signal that your national phase applications will also be objected to. The professional fees associated with responding to objections from each individual patent office in which you seek protection may be significant.

Although valuable, the ISR and Written Opinion are not binding on any of the national or regional patent offices, which may or may not share any concerns expressed therein.

With the issuance of the report and opinion, applicants are given one opportunity to amend the international application, an opportunity which is available for 16 months from the priority date, or two months from the transmittal date of these documents, whichever expires later. If it is believed that the ISA’s comments may be echoed by the national patent offices, an amendment in this phase can serve to preempt these, and potentially eliminate the need for back-and-forth correspondence with these national offices.

The next stage of the international phase is optional. The applicant may make a request for international preliminary examination. International preliminary examination gives the applicant an opportunity to respond to the comments of the ISA provided in the Written Opinion, amend their application, and receive a second assessment of patentability in reply.

The international preliminary examination can serve as a further verification of patentability before committing to national phase entry. However, the results of the international preliminary examination, like the results of the ISR and Written Opinion, are not binding on the national patent offices.

The applicant may also optionally request a supplementary international search. This is a request for another ISA, apart from the authority that conducted the initial search, to conduct an additional search for prior art which may impact the invention’s patentability. The first search may not identify all relevant references owing to linguistic limitations and the large number of patents, applications and publications in different languages around the world.

A final, non-optional stage of the international phase is the publication of your application, which is made available to the world online 18 months from its earliest filing date. At the same time, the ISR, Written Opinion, and any amendments made subsequent will also be published.

National and Regional Phase

One major advantage of filing a PCT application is that you are able to further delay your choice of jurisdictions in which to protect your invention. Under the Paris Convention, you would have 12 months from the filing of your first application anywhere in the world to file in subsequent countries with a claim to the first filing date, the PCT allows you to delay any national applications up to 30 months from the priority date.

That’s an extra 18 months to test the market and craft an international protection strategy, to acquire financing, or, relatedly, to find licensees.

The national phase, or regional phase in the case of regional offices like the European Patent Office (EPO), follows the international phase, and although it may be delayed for as long as 30 months from the priority date, it may also be entered into sooner, once the ISR and Written Opinion have been transmitted and the appropriate actions are taken.

To enter the national phase in any country, the applicant must pay national fees and, in some cases, file translations of the application. Once you enter the national phase in a country, that country’s patent office begins the process of determining whether they will grant you a patent for your invention.

Prosecution of a PCT application that has entered the national phase is no different from the prosecution of a national patent application not derived from a PCT application. The national phase is where the bulk of the expenditures associated with the PCT process originate.

These expenditures include professional fees paid to lawyers in each country to prosecute the application, national phase entry fees in each country, and the fees you may incur if the application is objected to in order to respond to and overcome these objections. In some cases, the national patent office fees are reduced with respect to PCT applications in recognition of the work already done by the ISA.

At this stage, the PCT procedure does not differ from the way in which the prosecution and grant of a patent would proceed if based on an independently filed national application. If and when the national patent office allows your application, subject to any pre-registration requirements in that jurisdiction, your application will issue to a granted patent with the effects prescribed by the law in that country or region.

Do you have an invention that could benefit from international protection through the PCT? Contact us today for a complimentary and confidential initial telephone phone appointment with a member of our team.