What is a PCT application? How to Get Foreign Utility Patents

PCT Application: The Gateway to Obtaining Foreign Utility Patents

Are you considering foreign utility patent protection? A Patent Cooperation Treaty application is a single utility patent filing that gives you international patent-pending status. By itself, the PCT application does not automatically give you foreign patent rights. It only starts the journey. Ultimately, you must follow through with filing individual patent applications in desired countries at a later time called the national phase. Nonetheless, a PCT application is a useful streamlined way to keep the option for foreign patent rights while deferring costs.

Need to file an international PCT patent application for a flat fee? Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate cost estimate for filing your PCT application.

Will a PCT application directly result in an issued patent?

The Patent Cooperation Treaty is an internationally recognized system for initiating worldwide utility patent. Under the PCT, an applicant can file one international patent application with a qualified Receiving Office (such as the USPTO) and designate multiple member PCT countries for coverage. A PCT application delays the deadline for individual national filings. It buys you time and keeps your foreign filing options open.

A PCT application is designed to be 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.

How does the PCT patent process work?

A PCT application merely starts the foreign filing process. Do not assume that you have already obtained foreign patents by simply filing a PCT application. Filing a PCT application means you are merely patent-pending internationally. You can almost think of a PCT application as a provisional application for worldwide protection in the sense that you must follow through with subsequent filings in order to obtain granted patents.

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 summary of critical utility patent deadlines.

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 phase until 30 months from the priority date (certain PCT countries have a 31-month national phase deadline). With a single filing that costs a few thousand dollars, you are buying an option that adds 18 months to the foreign filing deadline (i.e., from 12 months to 30 months).

PCT National Phase Timeline
PCT National Phase Timeline

The additional 18-19 months may be crucial for you to raise capital or monetize your invention. You may even decide that the invention is not worthy of protection in so many foreign countries, in which case you would have only spent a few thousand dollars to gain the extra time to come to this conclusion. Without the PCT application, you would be forced to decide to spend tens of thousands of dollars at the 12-month deadline only to realize later that it was not 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?

PCT member 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. Non-member countries have a foreign filing deadline that is 12 months from the priority date.

Why not file a PCT patent 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.

How much does a PCT application cost?

For a US applicant, expect a PCT application to cost between $3,500 to $4,500 when a nonprovisional patent application has been previously drafted. If your PCT application will be your first filing, then expect a higher cost to draft a nonprovisional utility patent application.

There are no additional government fees for designating all PCT member countries, so you might as well designate them all.

Need foreign patent protection?

Our patent attorneys are well versed in PCT and foreign filings. We also work with an extensive network of IP firms in Europe, Asia and Latin America. Email vlin@icaplaw.com or call (949) 223-9623 to see how we can help you get foreign utility patents.

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