If you want to seek patent protection for an invention in multiple countries, a Patent Cooperation Treaty (PCT) application allows you to begin through one international application process with two phases: an international phase followed by a national or regional phase. When considering how to file a PCT patent application, you typically hire a patent attorney, who helps you coordinate your patent strategy, prepare, and submit the application. You then use the international phase to decide where to pursue patents based on your business plans. Finally, you enter a national or regional phase in the countries or regional systems where you choose to seek country-specific patent protection.
Jones IP Law helps inventors, startups, and established businesses pursue patent protection in the U.S. and internationally. Founder Michael Jones combines a background in mechanical engineering with more than a decade of intellectual property experience representing technologies ranging from mechanical devices and manufacturing systems to computer software, machine learning, cloud computing, and digital platforms. We can help you create and implement an international patent strategy that leverages the benefits of the Patent Cooperation Treaty.
What Is a PCT Patent Application?
A PCT patent application is an international patent application that uses a coordinated patent review system administered by the World Intellectual Property Organization (WIPO). Most nations participate in the PCT, including the U.S. and most of its major international trading partners.
When you file a PCT application, you begin a single international application process with the legal effect of filing a separate patent application in each participating country, though the national patent offices do not yet begin patent examination. During the international phase, an international authority searches for earlier materials relevant to the invention and provides preliminary information about whether the invention may qualify for patent protection.
After the international phase, you choose the countries where you specifically want patent protection and complete the national phase. Each national patent office you select examines the application under its own laws and decides whether to issue a patent covering its jurisdiction.
The PCT application process coordinates patent protection internationally, but it does not issue a single worldwide patent.
How to File a PCT Patent Application
Filing a PCT application begins a process that continues through the international phase and, if you pursue patents in particular jurisdictions, into the national phase. You typically hire a patent attorney to guide you through the process, which involves three practical stages: preparing and filing, the international phase, and the national phase.
Prepare and File the PCT Patent Application
You can begin the international patent process by filing a PCT application, or you can submit your PCT application after filing a country-specific application. If you file a patent application describing the invention in one nation before your PCT application, you need to file the PCT application within 12 months. When you do, you can claim the nation-specific filing date as your priority date, which may establish that you filed before competing applications or public disclosures.
In the PCT application, you typically describe your invention in detail and define what aspects of the invention you want to protect through patent claims. You typically cannot add new technical subject matter after applying, so it is critical to work closely with your attorney to prepare a complete, descriptive application.
Your nationality and country of residence typically determine which receiving office you submit your application to. When you apply, you also select an International Searching Authority to conduct the international search after filing. Many U.S. applicants use the U.S. Patent and Trademark Office (USPTO) as the receiving office.
Complete the International Phase
After you file, the International Searching Authority you select searches materials that may affect whether the invention qualifies for patent protection, such as:
- Existing patents,
- Published patent applications, and
- Other public information related to how the invention or similar inventions work.
It issues an international search report identifying relevant materials and a written opinion providing a preliminary analysis of whether the invention appears patentable.
Your attorney typically reviews the materials, explains the opinion, and assesses how the results may affect the protection you seek. Based on that evaluation, you decide whether to continue, amend your application, or switch strategies.
WIPO ordinarily publishes the PCT application approximately 18 months after your filing date, making the application and related information available to the public.
Enter the National Phase
As the national-phase deadlines approach, you select the countries where you specifically want to pursue patent protection. For many jurisdictions, you must enter the national phase within 30 months after your filing date. Your attorney can help you identify the deadline for every jurisdiction you select.
The national patent office you select then reviews your application materials to determine whether to grant you a patent. Your U.S. patent attorney typically coordinates with foreign counsel to ensure you complete the process in each selected jurisdiction.
Frequently Asked Questions (FAQs)
How Much Does It Cost to File a PCT Patent Application?
The cost of filing a PCT application may include attorney fees for preparing or adapting the application and the transmittal, as well as international filing and search fees. The total depends on the receiving office, searching authority, whether you qualify for reduced fees, the application’s length, and the invention’s complexity.
When Must a PCT Application Be Filed?
You may file a PCT application as the first patent application for an invention. If you file a separate national application first, you typically have 12 months to file the PCT application.
Who Can File a PCT Patent Application?
At least one applicant generally must be a national or resident of a country that participates in the PCT.
What Is the Timeline for a PCT Patent Application?
If you submit a pre-PCT application, you generally file your PCT application within 12 months. WIPO ordinarily publishes the application approximately 18 months from your filing date, and you typically enter the national phase 30 months after that. The time required to complete the national examination varies by office and application.
Does a PCT Application Guarantee International Patent Protection?
No. A PCT application begins an international process with legal effect in participating countries, but it does not grant an international patent. Each patent office you select in the national phase independently decides whether to grant protection.
Coordinate Your International Patent Strategy with Jones IP Law
A PCT application allows you to complete a coordinated international patent application process. Jones IP Law is here to guide you through the stages of that process. We can help you design an international patent strategy, prepare your PCT application, assess the results, and coordinate the national phase.
Contact us to discuss your international patent strategy today.
Legal References Used to Inform This Page
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