Knowing the deadlines of the PCT process is critical to being successful and using the PCT to your advantage. Otherwise, you risk abandonment of your application and dedication of your invention to the public.
What is the priority deadline?
The first deadline is the priority deadline. The PCT application or international application must be filed within 12 months from the priority date of the first filed application. If this deadline is missed, the inventor will lose the priority claim and will not be able to claim the benefit of the first filed patent application.
Also, if the inventor previously disclosed the invention to others more than 12 months ago, the invention will be dedicated to the public.
In general, many start-ups don’t make money by pursuing foreign patent protection. This is not to say that it never happens. It certainly does occur. However, based on my anecdotal experience, it isn’t commonplace. Nevertheless, filing a PCT application in many cases makes sense. The cost is fairly low. For example, the PCT application can be filed with the lowest-cost Receiving Office.
What happens after filing the PCT application?
After filing the PCT application, the application enters the international phase of the PCT. During the international phase, the applicant will receive an International Search Report (ISR), a Written Opinion (WO), and an International Preliminary Report on Patentability (IPRP) or International Preliminary Examination Report (IPER).
What is the deadline to file the Article 19 Amendment?
The applicant can file an Article 19 Amendment to try to address the issues raised in the ISR/WO. The Article 19 Amendment must be filed within 2 months after the mail date of the International Search Report or 16 months from the priority date.
What is the deadline to request supplementary examination under the PCT?
Applicants can request a supplementary examination at any time before 22 months from the priority date. Essentially, the applicant is asking the International Search Authority to redo the search in light of the Article 19 Amendment.
What is the deadline to file a Chapter 2 demand?
A chapter 2 demand is a request to have a PCT application fully examined. The chapter 2 demand must be filed 22 months from the priority date or within 3 months of the transmittal date of the International Search Report and Written Opinion.
In general, we don’t recommend an examination by requesting a Chapter 2 demand for many different reasons. The primary reason is that it is more efficient to have your patent application examined under the laws of your first filed patent application.
What is the national phase filing deadline?
The next deadline is the national phase filing deadline. The national phase application must be filed within 30 or 31 months from the priority date of the first filed application. Upon filing, the application has now entered the national phase of the PCT.
Some countries require the national phase application to be filed within 30 months while others are 31 months. So, you have to check the desired country to make sure that you file the national phase application before the deadline. If the national phase application isn’t filed before the deadline, then the invention is dedicated to the public.