A PCT application is a single utility application filed with the Patent Office that can be filed later in multiple foreign countries. It streamlines the process for seeking worldwide patent protection. The cost to file patent applications throughout the world can be delayed for up to 18 months. During that time, you can test market your product in foreign countries. Based on the success of your marketing, you can choose to file a PCT national phase patent application in those commercially viable countries.
More than 150 countries have signed the PCT or Patent Cooperation Treaty. As such, by filing one PCT application, you gain worldwide patent pending status and access to major economic markets.
A few countries are not a part of the Patent Cooperation Treaty. For them, such as Taiwan and Hong Kong, you need to file a patent application outside of the PCT process, as discussed below.
What is the Patent Cooperation Treaty?
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. A PCT Application filed in a foreign country is called a PCT national phase patent application. The PCT is administered by the World Intellectual Property Organization (WIPO).
A Euro-PCT Application is a PCT Application filed with the European Patent Office during the national phase under the PCT. It is not a PCT Application.
Which countries are PCT contracting states?
As of February 20, 2022, 155 countries have signed the Patent Cooperation Treaty.
A few contracting states of the PCT include regions. For example, Europe includes 38 contracting states in its region. Also, additional validation states and extension states are included by filing the PCT national phase application with the European Patent Office.
When you file the PCT Application, designate all of the PCT contracting states because the cost is the same whether you designate only one or all of them. In this way, you have to option to file in any of the PCT contracting states later when the PCT national phase application is due.
|Two-Letter Code||Name of State||Date on Which State Became Bound by the PCT|
|AE||United Arab Emirates||10-Mar-99|
|AG||Antigua and Barbuda||17-Mar-00|
|BA||Bosnia and Herzegovina||7-Sep-96|
|CF||Central African Republic||24-Jan-78|
|IQ||Iraq||(will become bound on 30 April 2022)|
|IR||Iran (Islamic Republic of)||4-Oct-13|
|KN||Saint Kitts and Nevis||27-Oct-05|
|KR||Republic of Korea||10-Aug-84|
|MD||Republic of Moldova2||25-Dec-91|
|PG||Papua New Guinea||14-Jun-03|
|RU||Russian Federation2||29 March 197810|
|ST||Sao Tome and Principe||3-Jul-08|
|SY||Syrian Arab Republic||26-Jun-03|
|TT||Trinidad and Tobago||10-Mar-94|
|TZ||United Republic of Tanzania||14-Sep-99|
What is the PCT Process?
The PCT process consists of two phases – an international phase followed by a national phase.
When you file a PCT application, you enter the international phase of the PCT.
The national phase of the PCT begins when you file a PCT Application with a foreign patent office. The application is called a PCT national phase application.
What is the international phase of the PCT?
The International Phase of the PCT starts when a receiving office is selected, the contracting states of the PCT are designated, and after filing of the PCT application. Select all PCT contracting states because the costs are the same whether you select one or all of them. The International Phase ends 30 or 31 months from the filing of the earliest priority application.
For example, the international phase ends 30 months (July 1, 2024) or 31 months (August 1, 2024) for a U.S. provisional or nonprovisional patent application filed on January 1, 2022.
When do you have to file the PCT application?
The PCT application must be filed one year from the earliest filing date of your patent application. For example, the PCT application must be filed by January 15, 2023 for a U.S. provisional and nonprovisional patent application filed on January 15, 2022.
If the deadline is missed, a “request for restoration of the right of priority” may be filed within two months. Be safe! Don’t miss the deadline to file the PCT application because restored priority has significant problems and some countries (e.g., India) do not allow it.
The PCT application or the patent application which it claims priority must be filed before you market your product. Otherwise, your patent in foreign countries will be invalid because it is does not meet the requirement of absolute novelty.
Absolute novelty refers to the requirement that no one in the public must know about your invention before the patent application is filed. Any sort of marketing you do destroys the absolute novelty of your invention. Most foreign countries require absolute novelty. In contrast, the United States requires relative novelty which allows you to market your invention before the filing of the patent application.
What is a PCT National Phase Application?
A PCT national phase application is a PCT Application filed with the Patent Office of a contracting state under the PCT. For example, a PCT Application filed with the United States Patent and Trademark Office or the European Patent Office is called a PCT national phase application.
The national phase of the PCT starts when the PCT national phase application is filed. PCT contracting states allow you to file a PCT national phase patent application 30 or 31 months from the earliest priority date. See list below.
When do you have to file the PCT National Phase Application?
The PCT national phase application must be filed 20, 30, or 31 months from the earliest priority date.
For example, if you filed a U.S. provisional or nonprovisional patent application on January 1, 2022, and the PCT application on December 15, 2022, the deadline to file the PCT national phase application in the PCT contracting states is 30 or 31 months from January 1, 2022.
Instruct your patent attorney early in the process of any countries you want to seek patent protection. The documentation to file in certain foreign countries require a month or two to secure. For example, foreign patent offices may require a translation of your patent application in the local language. Or, they may require you to get a power of attorney legalized, authenticated or apostilled. These documents take a lot of time to prepare.
|Two Letter Country Code||Country||Time Limit|
|AE||United Arab Emirates||30|
|AG||Antigua and Barbuda||30|
|AP||African Regional Intellectual Property Organization||31|
|BA||Bosnia and Herzegovina||34|
|EP||European Patent Organisation||31|
|IR||Iran (Islamic Republic of)||30|
|KN||Saint Kitts and Nevis||30|
|MD||Republic of Moldova||31|
|OA||African Intellectual Property Organization||30|
|ST||Sao Tome and Principe||30|
|VC||Saint Vincent and the Grenadines||31|
How much does a PCT application cost?
The cost of the PCT application depends on the Receiving Office that you choose. If you select the United States Patent and Trademark Office (USPTO) or the European Patent Office (EPO) as the Receiving Office, the PCT application will cost you about $5,500.
On the other hand, if you select Russia as the Receiving Office, the PCT application will cost you about $3,500.
The difference between the two (USPTO and EPO versus Russia) is quality and cost. The Russian Patent Office may have a lower quality search but has a lower cost. The EPO and the USPTO may have a higher quality search but the costs are also higher. Many times, you don’t need a high quality search for the PCT process especially if your U.S. patent application has already been examined or will shortly be examined. You can save money on process of protecting your invention foreign countries in this area. Speak with you patent attorney on strategies for getting this done.
Which countries are not PCT contracting states?
Many countries are not a part of the Patent Cooperation Treaty. Only a few of these countries have significant economies such as Taiwan and Hong Kong. See the full list below.
- Typically, a patent application is filed in Taiwan within one (1) after filing your U.S. application (provisional or nonprovisional patent application). Priority is claimed to the filing date of your U.S. patent application.
- Hong Kong
- Although Hong Kong is not a part of the PCT, you can get a patent in Hong Kong if you file directly into Hong Kong or file a patent application China (People’s Republic of China) or Europe.
|Countries which are not a part of the PCT|
|Gulf Cooperation Council (GCC) (GCC itself is not a member, but all its countries are, including Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and UAE)|
|Vatican City (Holy See)|
How to file a patent application in a non-PCT Contracting State?
For non-PCT contracting states, you have to file directly with the patent office of that country. Your patent attorney should have a network of foreign associates you can rely on to file foreign patent applications.
Many non-PCT contracting states allow you to file a patent application and claim priority back to your U.S. patent application. Typically, you must do so within one year of the filing date of your U.S. application. In this way, you can receive the benefit of the filing date of your U.S. application in the non-PCT contracting states.
For example, Taiwan allows you to file a patent application within one year of the filing of your U.S. application.
The downside to filing a patent in a non-PCT contracting states is that you have to incur the filing expense immediately. You can’t delay the foreign filing expenses for 18 months as you can for PCT contracting states.
Some foreign countries which are not PCT contracting states allow you to seek patent protection through the PCT. For example, Hong Kong allows you to get a patent when you receive a patent in China or Europe. Just because the foreign country is not a PCT contracting state, ask your patent attorney how to get protection in the foreign country cost-effectively.