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A WORLD PATENT DOES NOT EXIST
I Want to Protect my Invention Throughout the World. Is
this a World Patent? No. As valuable as this would be, there is no
such thing as a world patent. There is not one patent that applies
throughout the world. If you want patent protection in more than one
country, ultimately you must apply in every nation or region you want that
protection in. The PCT application process only gives you the ability to
apply a first stage search process to your application and have it apply
in a second stage to the nations in which you want protection. You still
have to apply to those second stage nations separately after the first
stage is completed. A PCT application may not be filed for a design, that is, for inventions involving the ornamentallity of an object.
PCT EXPLANATION BREAKOUT
LAYOUT. The PCT is a complex subject are that
requires more than one page of explanation. The PCT discussion is on
5 web pages:
- pct.html
--- explains what the PCT process is and some reasons for
filing. You are on this page now.
- pctnat.html
--- explains the U.S. National Stage of the PCT process.
PATENT COOPERATION TREATY (PCT)
 What is the PCT?
The Patent Cooperation Treaty or PCT is a multilateral treaty that was
concluded in Washington in 1970 and entered into force in 1978 with most
of the nations in the industrialized world (153 nations as of 01-JAN-2021,
see map at right). It is administered by the International Bureau of the
World Intellectual Property Organization (WIPO), whose headquarters is in
Geneva (Switzerland). PCT international applications do not result in issuance of “international patents” and the International Bureau (IB) does not grant patents. The decision on whether to confer patent rights remains in the hands of the national and/or regional patent offices, and the patent rights are limited to the jurisdiction of the patent granting authority.
WHY FILE A PCT APPLICATION AT ALL
What are the Benefits of the PCT Process? By the
single act of filing an international application with a single patent office (i.e. Receiving Office), it is
possible to have a right to later file (up to 30 or 31 months later) a national patent application in as many of the countries or regions that are part of the PCT system as the applicant wishes to seek patent protection.
Most PCT application filings occur within 12 months of filing a first national application in the country of residence of the inventor, but a PCT application can be the first application filing. The PCT deadline for filing the second phase (sometimes called the "second stage") national application(s) in other countries is 30 or 31 months from the priority date. There are a few countries with an earlier deadline, but these are usually ignored by inventors. The "priority date" is the date of the first filing, whether that be the filing date of the first national application or the filing date of the PCT application if that was the first application filed.
Thus, the PCT system delays the need to file separate patent applications in PCT countries. The PCT system permits filing one PCT application that is valid in those PCT countries for about 30 or 31 months from the priority application filing date. At the end of that 30- or 31-month period, one may file a national application in any or almost all of the PCT countries where patent protection is desired. Seen in this light, the PCT system delays but does not eliminate the requirement for patent application filing in any or all of the PCT nations where patent rights may be sought.
In addition, the PCT system provides the applicant with an initial search report prepared on the PCT application, which provides some non-binding guidance on what national examiners may also find when examining the application. The applicant may find this useful in deciding whether or not to file any national stage application. Usually, within sixteen months from the priority date, an applicant-selected International Searching Authority (ISA) will conduct an international search and establish an International Search Report (ISR) along with the written opinion of the ISA. The purpose of the international search is to preliminarily identify relevant prior art that may impact subsequent consideration in the national stage. The ISR lists prior art documents considered to be relevant, the classification of the subject matter and an indication of the field searched. The ISA also establishes a preliminary and non-binding written opinion on the questions whether the invention appears to be novel, involves an inventive step and is industrially applicable. Both the ISR and the written opinion are transmitted to the applicant and the International Bureau and may be used by a national authority in aiding their consideration of the application in any national stage application filed by the applicant.
PCT APPLICATION - A TWO PHASE PROCESS
What is the PCT Process? There are two phases to
a PCT application: the International phase lasting up to 30 or 31 months; and
the national phase where the application is considered by each nation
where patent protection is sought. The PCT provides for the filing of one
patent application ("the international application"), with
effect in several States, instead of filing several separate national
and/or regional patent applications.
Language commonality. The filing of an
international application takes place in one of the languages (e.g.
English) accepted by the Receiving Office with which the application is filed; for
many applicants that will be the language, or one of the languages, used
by the national or regional Patent Office of, or acting for, their
country.
One location. The international application is
filed in a single place; it is generally filed at the national Patent
Office of the applicant’s country or at a regional Patent Office acting
for the applicant’s country, or it may be filed directly with the
International Bureau in its capacity as a Receiving Office under the PCT.
However, filing first with the International Bureau may require a foreign filing
license.
Common formalities. There is a prescribed form
for the international application. This form must be accepted by all
Designated Offices (patent offices of any of the countries participating in the PCT system) for the purposes of the national phase, so that there
is no need to comply with a great variety of widely differing formal
requirements in the many countries in which protection may be
sought. However, the broadest protection is afforded when the
application employs a technical format and style of claiming having
historical precedent in that country. Where the U.S. is the primary
market, it makes sense for an applicant to have his PCT application
prepared by a U.S. practitioner.
Fee payments at one office. The international
fees payable in respect of the filing of an international application may
be paid at one time, at one Office and in one currency. The costs and
possible complications connected with the payment, on filing, of many fees
in many countries, and generally in different currencies, are thus
avoided.
More time to decide. Before the applicant goes
to the effort and expense of having translations prepared, paying the
national or regional fees and appointing agents in the various countries,
his views are able to mature to a greater extent than would be possible
without the PCT, not only because he has more time, but also because the
international search report, the written opinion of the International
Searching Authority, and the international preliminary report on
patentability constitute a solid basis on which he can judge his chances
of obtaining protection. Any patents subsequently granted on the
application by the designated or elected Offices can be relied on by the
applicant to a greater extent than would have been the case without the
benefit of the international search report, the written opinion of the
International Searching Authority and the international preliminary report
on patentability.
More time to pick nations. Moreover, because of
the longer time the applicant has for making decisions, he is better
placed to assess the technical value and economic interest of patent
protection and to select the particular countries in which he desires to
continue seeking protection for his invention. As a result, substantial
savings can be made in both translation and filing costs for those
countries which are no longer of interest to the applicant.
Deferred translations. If an international
application is filed in a language which is not both a language accepted
by the International Searching Authority which is to carry out the
international search and a language of publication, it needs to be
translated into an appropriate language shortly after filing, but all the
translations required by the Offices of or acting for the countries in
which the applicant ultimately wishes to obtain protection need to be
prepared 7 to 19 months later.
Deferred fees. Fees payable to national or
regional Patent Offices similarly become due later than they do without
the PCT.
Search results. An international search report
that is favorable from the applicant’s viewpoint strengthens his
position vis-à-vis the various national or regional Patent Offices, and
his arguments for the grant of a patent by those Offices are likely to
become more convincing.
This is more compelling in the case of a favorable international
preliminary report on patentability under either Chapter I or II, which
contains far more material on which to base an opinion on the chances of
obtaining patents than does an international search report.
If the international search report and the written opinion of the
International Searching Authority are partly favorable and partly
unfavorable, the applicant can modify his claims so as to maintain only
those that are likely to result in the grant of a patent. If the
international search report and the written opinion are unfavorable, and
the applicant consequently decides not to proceed any further, he saves
the cost of having the application processed in the various countries.
Fewer duplications. There is no need to provide
each Office with original drawings, or certified copies of the priority
application. There is also a reduction in national fees in several
countries and the European
Patent Office, etc.
Should I file a PCT or a U.S. non-provisional or both? This question is often raised near the 1-year deadline after filing a provisional application in the U.S. The answer has two schools of thought:
The first says that if you intend to file in more than three countries, you should file a PCT and not file a U.S. non-provisional application. The reasoning is that an applicant should not invest in a U.S. application that may or may not be be patentable. When the interanational search report comes out, it will then let the inventor know if the invention is patentable. Once it is found patentable, then the inventor can more confidently invest in the national stage applications, including in the U.S. Filing only a PCT application can make sense even though it is initially more expensive, when the value of the technology is not known at the one-year anniversary of the provisional filing date. If the inventor does not know the value, then the inventor may want to defer decisions to a later date when the inventor might know more. So, this PCT only strategy could be helpful when there is interest in the technology such that the inventor wants the potential for a patent, but no commercial strategy prospects have matured that might be interested in a patented product.
The second school of thought teaches that one should file both a U.S. non-provisional and a PCT application because the U.S. application would probably be examined before the 30-month national stage filing deadline on the PCT. The earlier U.S. results, which are probably more rigorous that what would be found in an International Search Report by a non-U.S. Internationals Search Authority, can then be used to decide on whether or not to file in the other countries. So, an inventor gets more info and more deciding time when filing both a U.S. applcation and a PCT application. When the inventor feels confident that there will be commercial activities in the U.S. and internationally, and possibly that the inventor would have an easier time convincing investors if a U.S. patent were in hand, then a U.S. application and a PCT application make some sense. He probably moves to a U.S. patent sooner and also preserves his option to later decide if an when to file national stage applications in other countries.
PCT What and Why
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| PCT Costs | PCT U.S.
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This file last modified 01/20/21.
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