The Patent Cooperation Treaty (PCT) is an international agreement allowing inventors and businesses to use one patent application that can be filed in multiple countries. A few of the benefits of the PCT are a streamlined procedure, delayed patent expenses, and improved chances of obtaining a patent.
How to file an international application under the Patent Cooperation Treaty?
The first step in the PCT process is filing an international application (aka PCT Application) which can be filed with the International Bureau of the World Intellectual Property Organization (WIPO) or a local Receiving Office (e.g., USPTO). Upon filing, the PCT application has entered the international phase of the PCT. The international application must include the required forms and the specification (written description, claims, drawings). By filing the PCT application, the patent expenses related to the filing in each foreign country can be delayed by up to 30 or 31 months (about 2 and a half years) from the earliest priority date.
What is the International Search Report (ISR)?
After the PCT application is filed, the International Search Authority (ISA) will conduct a search and mail an International Search Report (ISR) to the applicant. The search identifies prior art that may be relevant to the patentability of the invention. The International Search Report includes a Written Opinion on the patentability of the invention. In response to the search report, an Article 19 Amendment may be filed to address the issues.
Because the ISR and any responses to them are suggestive and not binding on local patent offices, we generally don’t recommend filing a response.
What is the International Preliminary Report on Patentability and Written Opinion (IPRP/WO)?
The IPRP is similar to an ISR but the IPRP is generated when a Chapter 2 Demand is made during the international phase. It is a more in-depth analysis of the patentability of the claims recited in the PCT application.
The purpose of the examination is to determine whether the invention is novel and nonobvious. Based on the examination, International Search Authority (ISA) mails an International Preliminary Report on Patentability (IPRP). The IPRP includes a written opinion (WO) on the patentability of the invention. Applicants are allowed to respond to the Written Opinion. Any favorable opinion can be used to file a request under the Patent Prosecution Highway program when filing a national phase application.
However, in lieu of filing a Chapter 2 demand to secure allowed claims, a better approach to securing allowed claims may be to secure them in your first filed application. The patent application you filed in your home country is typically the first filed application. The first filed application can be filed with a request to expedite patent prosecution to get allowed claims sooner than later.
Once the claims are allowed, you can export these allowed claims to the patent offices in foreign countries under the Patent Prosecution Highway. Essentially, when the national stage application is filed, the goal is to have allowed claims before the national phase filing deadline. When the national phase application is filed, it can be filed with a request under the Patent Prosecution Highway. It’s less expensive to argue patentability with your home patent office. Plus, by securing allowed claims first, you increase the chance of obtaining a patent in foreign countries through the Patent Prosecution Highway.
What is the national phase of the Patent Cooperation Treaty?
Within 30 to 31 months from the earliest priority date, the applicant can choose to enter the national phase in one or more of the PCT member countries. The national phase is where the applicant files the PCT application in the patent office of a foreign country. The PCT application must be filed in each country where the applicant wants patent protection. After the deadline to enter the national phase passes, the applicant can no longer file a national phase application in any country.
The patent application is examined by the foreign patent office. The local patent office will use the International Search Report and the International Preliminary Report on Patentability/Written Opinion (IPRP/WO) to help evaluate the patentability of the invention. If you want to overcome a negative written opinion, you can do so by directing the examiner to the allowed claims in another country. It’s best to do so under the Patent Prosecution Highway.
It’s important to note that there are strict time limits and deadlines that must be met throughout the PCT process. Failure to meet these PCT deadlines can result in the withdrawal or abandonment of the application.
The Patent Cooperation Treaty (PCT) is a powerful tool that allows inventors and businesses to delay patent expenses and improve the odds of securing a patent in multiple countries.