Patent Co-Operation Treaty (PCT) Application

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 125 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of 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”.

Briefly, an outline of the PCT procedure includes the following steps:

Filing: you file an international application, complying with the PCT formality requirements, in one language, and you pay one set of fees.

International Search: an “International Searching Authority (ISA)” (one of the world’s major patent Offices) identifies the published documents which may have an influence on whether your invention is patentable and establishes an opinion on your invention’s potential patentability.

International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.

International Preliminary Examination: an “International Preliminary Examining Authority (IPEA)” (one of the world’s major patent Offices), at your request, carries out an additional patentability analysis, usually on an amended version of your application.

National Phase: after the end of the PCT procedure, 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.

Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. For more information see PCT Legal Administration Home Page or WIPO PCT Systems Home Page.

International Publication

WIPO publishes the international application shortly after the expiration of 18 months from the priority date (if it has not been withdrawn earlier), together with the international search report. You receive a copy of the published international application, and each PCT Contracting State receives a copy of all published international applications. In addition, WIPO publishes the weekly PCT Gazette which contains basic data about the international applications published that week in a uniform and abbreviated format. The Gazette can be found at WIPO Gazette – it is searchable (by bibliographic data, text of the title and abstract, and by full text soon after publication), and the interface is multilingual (English, French, Spanish).

International Preliminary Examination

International preliminary examination is a second evaluation of the potential patentability of the invention, using the same standards on which the written opinion of the ISA was based. If you wish to make amendments to your international application in order to overcome documents identified in the search report and conclusions made in the written opinion of the ISA, international preliminary examination provides the only possibility to actively participate in the examination process and potentially influence the findings of the examiner before entering the national phase – you can submit amendments and arguments, and are entitled to an interview with the examiner. At the end of the procedure, an international preliminary report on patentability (IPRP Chapter II) will be issued. For a given international patent application, there may be one or more competent IPEAs; your PCT receiving Office can supply details or you may consult the PCT Applicant’s Guide and the PCT Newsletter.

National Phase Entry

It is only after you have decided whether, and in respect of which States, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents. More information on national phase entry in general can be found in Volume II of the PCT Applicant’s Guide, and specific information concerning fees and national requirements can be found in the national chapters for each PCT Contracting State in the same Guide.

Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent. Any examination these Offices may undertake should be made easier by the PCT international search report and the written opinion, which enable you to make necessary amendments to the claims in the application even before the national procedure starts. It is facilitated even more by the international preliminary examination procedure during which further amendments (and their patentability evaluation) are possible. You also achieve other savings in communications, postage and translations because the work done during the international processing is generally not repeated before each Office (for example, you submit only one copy of the priority document instead of having to submit several copies).