The path to global patent protection can be fraught with high costs and complexities, but the Patent Cooperation Treaty (PCT) can offer strategic advantages. The PCT provides an international filing procedure that facilitates the filing of an international patent application, paving the way to patent protection in multiple countries simultaneously.
However, like any significant decision, choosing this route comes with its pros and cons. In this article, we’ll offer insights into the PCT process so you can decide whether the PCT application is right for you.
What is a Patent Cooperation Treaty (PCT) Patent?
A PCT patent isn’t a patent in itself but refers to a patent application processed through the Patent Cooperation Treaty. This treaty, governed by the World Intellectual Property Organization (WIPO), offers a unified procedure for filing patent applications. It helps to protect inventions in each of its contracting states. There are currently over 155 member countries, making the PCT particularly useful for those seeking patent protection in multiple member states.
The primary role of the PCT is to streamline the initial filing and assessment process for patent applications across multiple jurisdictions. Instead of filing separate national applications in each country where protection is sought. An inventor can file one international application under the PCT. This application has the same effect as national applications filed in the designated PCT member countries.
Advantages of PCT Patent
The PCT system is designed to simplify the process of seeking patent protection internationally. This unified approach offers several strategic advantages:
● Efficiency: the process streamlines the filing of patent applications for international protection. By submitting one PCT application, innovators can simultaneously seek protection in all countries that are member states.
● Extended Decision Time: applicants have up to 30 or 31 months (depending on the country) from the priority date of their application to decide in which specific countries to pursue full patent protection. This extended timeframe allows applicants more time to assess the commercial viability of their invention in different markets before incurring the costs associated with entering the national phase.
● Early Insight: during the international phase, the application will go through an international search. After that you will receive a written opinion on your invention’s patentability. You can also request an International Preliminary Examination Report, which provides additional insights into the potential patentability of your invention. This early feedback can be crucial for making informed decisions about subsequent national phase entries. Additionally, the international preliminary report offers a non-binding opinion on the patentability of the claims. Further aiding applicants in evaluating their chances of obtaining patents before entering the national or regional phase.
The PCT does not grant patents directly. The responsibility of patent granting remains with national or regional patent offices during the subsequent national phase of the process. However, the PCT system eases the path to securing patent protection across multiple territories. That helps inventors safeguard their innovations while exploring global markets.
Disadvantages of PCT Patent
While the PCT system provides numerous advantages, there are also certain disadvantages that should be taken into consideration.
One significant drawback of the PCT process is the financial burden during the national phase. After the international phase, when an inventor decides to pursue patent protection in specific PCT member countries, separate national fees must be paid in each chosen jurisdiction. These costs can be substantial, as they often include government fees and translation expenses. Additionally, the national or regional offices are responsible for evaluating patent applications during this phase. Which can further increase costs due to the need for detailed submissions. Also there is the possibility of fee reductions based on the applicant’s nationality or residency status.
The PCT application may extend the time it takes to ultimately obtain a patent. Because it includes an international phase that can last up to 31 months before entering the national phases.
Another challenge is the need for local legal representation. Each member country may have unique legal requirements and procedures. So inventors typically need to hire local patent attorneys in each jurisdiction where they seek to register their patents.
It’s also important to note that the PCT process does not guarantee that a patent will be granted. The PCT merely facilitates the filing and preliminary examination of the patent application on an international level. The decision to grant a patent is made by national patent offices. These offices conduct their own examination processes, which can lead to different outcomes based on local patent laws and standards.
The International Patent Application Process under PCT
The PCT application typically starts 12 months after filing the first patent application, known as the priority application. It can be filed with a national patent office, the International Bureau of WIPO, or a regional patent office. The application should include all relevant documentation – description, claims, abstract, and drawings – and requires payment of international filing fees. Translations of the application might also be necessar.
During the international phase, the application will go through a search and a preliminary examination:
● International Search: an International Searching Authority (ISA) assesses the invention against existing technology. It helps to determine its novelty and inventiveness, producing an International Search Report (ISR).
● Publication: at about 18 months from the priority date, the application is published by WIPO, making the invention details accessible worldwide.
● Optional Supplemental Search and Preliminary Examination: while optional, a second ISA can identify documents that may not have been found by your first search. You can also request an optional assessment by an International Preliminary Examining Authority (IPEA) for a deeper evaluation of your application’s patentability.
Approximately 30 months from the priority date, the process transitions into the national phase, where specific protection is sought in individual countries. Entering the national phase is the critical step where applicants choose to seek patent protection in specific countries.
Practical Tips for Applicants Entering the National Phase
The PCT application process requires strategic planning and thoughtful decision-making. First, select an ISA with a strong record in your technology field, as this can influence the thoroughness and relevance of the search report. Also, consider the ISA’s location —it makes sense to work with an ISA in a region where you intend to commercialize your invention.
To effectively prepare for the national phase, identify key markets where your invention has commercial potential and where patent protection is most likely to enhance that potential. Consider the costs associated with filing in multiple jurisdictions and understand the legal requirements of each jurisdiction to streamline the process and avoid pitfalls.
Successfully navigating international patent applications requires expert guidance and strategic planning. At Metida, our team of experienced IP attorneys is ready to assist you with your PCT applications and help you optimize your patent strategy. Contact us today to ensure your innovations receive the protection they deserve on a global scale.
Got questions?
Looking to secure a PCT patent, navigate the patent application process, or protect your innovative ideas? Our team can guide you through conducting a thorough patent search and filing your application. Whether you need advice on how to patent an idea, consultation for unitary patent, understand patent office requirements, or protect against infringement, we’re here to help.
Reach out to our team and consult on a case-by-case basis.
