What is a PCT application?
PCT stands for Patent Cooperation Treaty, an internationally recognized system for initiating worldwide utility patent coverage with a single filing. Under the PCT, an applicant can file a single international patent application with the U.S. Patent and Trademark Office (USPTO) and designate multiple member PCT countries for coverage.
Keep in mind that a PCT application merely starts the foreign filing process, and does not mean that you have obtained any granted foreign patents. In other words, filing a PCT application means you are patent-pending worldwide, but not yet patented worldwide.
Will a PCT application directly result in an issued patent?
No, a PCT application is by nature a temporary placeholder. It serves as a delay mechanism to buy more time before entering the national stage of each desired member country. In that respect, a PCT application is similar to an option contract in the financial world.
To illustrate, suppose you begin the patent process with a single utility patent application in the US. Keep in mind that you must file your US application prior to any public disclosures to safely reserve the right to seek foreign patent protection. Here’s a helpful utility patent timeline.
This initial US filing triggers a 1-year deadline for filing any foreign applications in order to claim the priority date (i.e., the original filing date) of your earlier US filing. Without the PCT, you would have to file multiple applications (i.e., one in each desired country) at this one-year anniversary in order to make the priority claim. That can be a potentially significant outlay of cash at an early stage of the concept.
How the PCT delay works
By filing a single PCT application, you may designate any or all of the member PCT countries, thereby postponing the deadline for entering the “national stage” (also known as “national phase”) until 30 months from the priority date. With a single filing that costs a few thousand dollars, you are buying an option that extends your national stage deadline by roughly 18 months (i.e. from 12 months to 30 months). There are no additional government fees for designating all member countries.
This additional 1.5 years may be crucial for you to realize the commercial potential of your invention, gather funding, or even decide that the invention is not worthy of protection in so many foreign countries. Even if you come to the latter conclusion, it is preferable that you only spent a few thousand dollars to give yourself the extra time to figure this out rather than laying out tens or hundreds of thousands of dollars upfront only to realize later that it wasn’t worth it.
Is a Power of Attorney required for a PCT application?
If the Receiving Office is the USPTO, then a power of attorney is not required as the appointment of an agent may be effected in the PCT Request form [MPEP 1807].
Entering the national stage of PCT countries
At the national stage deadline (typically 30 or 31 months from the priority date), you must file a national stage application in each desired foreign country. The initial stage filings may require a significant outlay of cash. Initial filings that require translation tend to cost more. Here are our firm’s rough estimates of initial national stage filings. Keep in mind that each country or region may charge annual taxes (aka “annuities”) for keeping the application alive.
When is the national stage deadline?
Most PCT countries have either a 30-month or 31-month national stage deadline. Here’s a list of the national stage time limits. Our firm prefers to err on the side of caution and regard the earlier 30-month date as the national stage deadline.
Some notable foreign IP offices that have 31-month deadlines include Australia, European Patent Office (EPO), India and S. Korea, among others.
What about non-member countries?
While most developed countries are members of the PCT, you still need to be aware of those that aren’t (e.g., Taiwan) in case you desire to seek patent protection in those regions.
Why not file a PCT application?
While the PCT is a helpful tool, it may not be for everyone. For example, as you approach the 12-month deadline from your initial patent filing, you might realize that you wish to seek patent protection in only one or two other foreign countries. If you are certain that you do not want to reserve the option to file in additional countries, then you can simply choose to file direct applications in your desired countries by the one-year anniversary. It is also possible that the only foreign countries that you care about are not members of the PCT (e.g., Taiwan). Consult with your patent attorney to formulate a strategy that makes sense.
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