For most inventors who wish to protect their inventions in other countries, the best approach is to simply file patents in each desired country. But when you wish to file for patents in more than five countries, you can save a great deal of money and time by instead filing a Patent Cooperation Treaty patent.
What is a Patent Cooperation Treaty (PCT) Patent?
For well over a century, most countries have recognized the need for cooperation between their respective patent offices in order to bolster international trade. The first patent treaty was signed in 1883, but the scale and extent of international cooperation has greatly increased in subsequent years.
In 1970, 18 countries signed the Patent Cooperation Treaty, which provided for a streamlined procedure for protecting inventions in each participating country. Since the initial signing, a total of 151 countries have ratified the treaty.
The biggest advantage of the procedure codified by the PCT treaty is that it gives inventors much more time to meet the filing deadlines for participating countries, which in turn allows for more time to develop a strategy for which countries in which to file patent applications. It should be noted that while people often casually refer to filing “PCT patents,” the PCT does not provide for an international patent. It simply makes the process of filing patents in many different countries easier, cheaper, and simpler.
How to File a Patent Cooperation Treaty Patent Application
Before you can file for patent protection outside the United States, you must obtain a foreign filing license from the USPTO. This is because the United States government has reserves the right to suppress inventions that could impact national security. Obviously, this is an only an issue for a minute minority of inventions, so typically getting this license is a formality. The best way to get a foreign filing license is simply to apply for a U.S. patent, as you will almost always automatically be given a license shortly after filing the application.
Once you have received a foreign filing license for your invention, you have 12 months from your filing date to file a PCT patent application. When you submit a PCT Request to the U.S. Patent Office, the World Intellectual Property Organization—which administers the PCT system—checks that your application meets the basic requirements for application. Then, one of the major participating patent offices (often the USPTO, but sometimes the European or Japanese Patent Office) is assigned to conduct a literature search to determine if there is any existing prior art which would render the invention unpatentable. When you file the International Application, you select the receiving office (RO) who handles the administrative aspects of the application along with the International Search Authority (ISR) who handles the patentability determination.
If the results of the search are favorable, the applicant can then indicate which countries in which they would like to have patent protection. You have 30 months from the filing of your first patent application (likely your U.S. patent application) to determine which countries in which you wish to formally file for a patent. While it may be tempting to file in as many countries as possible, there are separate filing fees for each country, many of which are quite high. At this point, you have entered what is known as the “national phase” of the PCT application process, as you are now submitting paperwork and paying fees on a country by country basis, rather than communicating with a single organization.
The PCT patent process is extremely complex (and expensive). Unless you have extensive experience with patent filing, it’s advisable to consult with a patent attorney in order to develop the strategy that will best protect your invention, while keeping costs to a minimum.