We are often asked what advantages a PCT-Application has. In this article we want to show you those advantages so that you get a clear view and be able to judge whether a PCT-filling makes sense or not.
PCT stands for “Patent Cooperation Treaty”. The agreement makes it possible to seek patent protection for an invention simultaneously in a nearly 150 countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. In other words: The PCT-application can be used as a patent application-“template” for every Member country. This saves not just a lot of time but also money. That why it’s often called the “International Patent”. Note: The PCT-Application is divided into two application phases, International and National, which means that the granting of the patent remains under the control of the national or regional patent Offices. We will come back to this later on.
The Patent Cooperation Treaty came into existence in 1970, and has been subsequently several times. It is open to every State that is member of the Paris Convention for the Protection of Industrial Property. At the moment there are 148 contracting states:
Process of filling a PCT-application
- Filing: you file an international application with a national or regional patent Office or WIPO (if permitted by your State’s national security provisions), complying with the formality requirements, in one language (preferably English), and you pay one set of fees.
- International Search: an “International Searching Authority” (ISA) identifies the published patent documents and technical literature (“prior art”). So it’s a check whether your invention is patentable or not.
- International Publication: after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.
- Supplementary International Search (optional): a second authority identifies published documents which may not have been found by the first ISA.
- International Preliminary Examination (optional): another way to get clarification whether your invention is patentable. A third ISAs carries out an additional patentability analysis, usually on an amended version of the application.
- National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, 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.
Overview PCT-System // Source: WIPO
Is a PCT-application the only way to protect my invention in multiple countries?
No. There is another way to protect your invention:
Direct (“Paris”) Route:
If you choose to go the direct/”Paris” route, you directly file separate patent applications at the same time in all of the countries in which you would like to protect your invention. That’s the safest, but also the most complex and time- and cost intensive way. It is not mandatory, that the country you apply for a patent is member of the Paris Convention for the Protection of Industrial Property. You then file separate patent applications in other (Paris Convention) countries within 12 months from the filing date of that first patent application. Often it’s the date you filed your national/regional patent. This is giving you the benefit to claim the filing date of the first application on the countries you apply for.
In Comparison – the PCT Route:
The PCT route is simpler, easier and more cost-effective than both, direct or Paris route filings. you can file an application under the PCT, directly or within the 12-month period provided for by the Paris Convention from the filing date of a first application. which is valid in all Contracting States of the PCT.
In our next episode we will show you what aspects you’ll have to consider when filing your international application!
Any questions left?
If you have any questions left, please do not hesitate to ask us. We will help you – promised!
Source: “PCT – FAQ” WIPO