Brown & Michaels
The Patent Cooperation Treaty (PCT)
If you are considering filing a patent application in five or more countries (count a European Patent Office application as one country); or if you are going to consider applying for foreign patents on your invention, but are not sure where; or if you will be applying for foreign patents, but you would like to delay the substantial expense of filing many applications beyond the usual one year from US filing, you would be well advised to think about doing your foreign filing through the Patent Cooperation Treaty ("PCT"). Most major countries have now signed the PCT, and new countries are continually being added. We at Brown and Michaels have successfully filed for a number of foreign patents, both directly and through the PCT, and have excellent associates in most foreign countries. We can advise you about the advantages and disadvantages of each method.
Assuming you're a citizen or resident of the US, the first step is to file in the United States, as usual (if you are neither a citizen nor a resident of the US, see this note). Once your US patent application is on file, you have one year to claim the priority of your US filing date in foreign countries. That is, if you file in a foreign country within one year of filing in the USA, you are considered to have filed in the foreign country on the same day as you filed in the US. (Note that if you filed a Provisional Application, your one-year period dates from the filing of the Provisional, not the regular utility patent application).
You can then file your PCT application at any time within this one-year priority period, claiming priority from the first US application (provisional or non-provisional). Your PCT application covers all of the PCT member countries - 152 of them as of June 9, 2017.
Filing through PCT, instead of directly in the member countries, allows you to delay "National Phase" filing in these countries up to 30 months from your US filing date (31 months in some). This can be helpful, by providing more information and time to make decisions about where to file patent applications. In other words, filing through the PCT will give you up to 18 or 19 months more time than you would normally have to file directly in foreign countries.
The PCT application will be searched and examined in the office you select for that purpose - what office(s) you may select from depends on where you are a citizen or resident. If you are a US citizen or resident, you may use either the US Patent and Trademark Office, the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), IP Australia (IPAU), the Israel Patent Office (ILPO - see note 4), the Singapore IP Office, the Japanese Patent Office (JPO) or the Russian Patent Office (Rospatent). This office will issue an International Search Report and an International Preliminary Report on Patentability, which will give you another look at patentability from your priority application (especially if you selected another office than the one in which the priority application was filed), and might include other art than the national examiner cited.
Note that the EPO will not search business methods, JPO will only search "green technologies" and KIPO has a list of excluded technologies - see our PCT News page for details. IPAU removed the list of excluded technologies as of September 2014, and will now examine up to 250 applications from the US each calendar quarter - but IPAU is not the least expensive search authority - that's Russia - nor do most patent professionals consider it the best - that would probably be the EPO - so, there is very little reason for a US filer to choose IPAU.
Filing a "Chapter II Demand" for an International Preliminary Examination, which was once required to get the full delay period, is now optional in all but a very few countries (see note 1, below, about countries which have not changed their rules to grant a full 30 months without International Examination). You can file the demand up to the later of 22 months from your priority date or three months after the date the International Search Report was sent to you. Filing the demand (at a cost of approximately $1,500) will get you another IPRP and the opportunity to file certain amendments prior to the examination. In most cases, we do not expect that our clients will be filing Chapter II demands.
At the end of the PCT International Phase time period, it is still necessary to file national applications in each country in which you will want a patent ("enter the National Phase"), although you need not file in every PCT member country. Brown and Michaels can handle these filings by working through associates in each of the countries or regions.
You can find a calculator for determining all of the PCT dates on the WIPO website.
Filing through the PCT is not inexpensive - expect to spend $4,000-$5,000 for the PCT Application, most of which is government filing fees.
The primary advantage of the PCT system is the delay of national filing costs, and, if you choose to have the PCT application searched and examined in another office than the one in which you filed your priority application, having a search (and examination) in another patent office. The U.S. patent office often does not find foreign patents, while a European or Korean (etc.) examiner may find references that might change your mind about filing patents in some countries. Also, a positive examination report from the PCT system can often make later filing in some countries go more smoothly. This can substantially reduce costs down the road.
PCT is also a very attractive option for those who intend to find licensees for their foreign patent rights. A PCT application can keep your options open in many countries for a relatively low cost and then the licensee can pay the costs of prosecution in any countries in which the licensee is interested.
* Note 1: A small number of countries (only three as this is being revised in March 2017) have not changed their national laws to conform with the uniform 30 month time period. Filing Chapter II is still required in these countries to get the benefit of the full 30 month delay. However, since all of these countries are members of regional systems which have accepted the 30 month period (EPO or ARIPO), coverage is still possible in these countries through the regional route. See our "PCT News" page for the most up-to-date list of these countries.
Note 2: The EPO will no longer act as International Preliminary Examining Authority for PCT applications from US nationals in the field of Business Methods. If your application falls in this field, you will have to use the USPTO or KIPO for your PCT search and examination.
Note 3: Be sure to check the list of PCT Countries to be sure that all of the countries in which you will want protection are members of the PCT. We also have a list of countries which are NOT PCT members. Of the countries most requested by our clients, it should be noted that Taiwan is NOT a PCT member. If a country is not a member of the PCT, the delays permitted by the PCT are not available, and you will have to file national applications in each non-PCT country, usually within a year of your priority date.
Note 4: The ILPO is available as ISA for International Applications filed by US nationals or citizens after October 1, 2014. However, at least initially, the ILPO will limit its intake to 75 applications per calendar quarter.
If you are either a resident or a national of a country which is a member of the PCT, you can file a PCT application, either as your first filing or based on a national or regional patent application. If are neither a resident nor a national of a PCT member country, you cannot file through the PCT.
Each country designates where PCT applications filed by nationals or residents of their country must be filed - most often, this can be either in your home country or the International Bureau of WIPO. Some countries also allow filing PCT applications in the USPTO or EPO, or other national or regional patent offices.
To find out the requirements for your country, look at the "General Information" page for your country (column "B") in the PCT Applicant's Guide. The entry labeled "Competent Receiving Office for nationals of (wherever)" will indicate where you may file your PCT application.
Brown & Michaels can act as your agent to file your PCT application in the USPTO only if the USPTO is listed as a competent receiving office for your country. Otherwise, you will need to use an agent who is admitted to practice in one of the acceptable receiving offices for citizens or nationals of your country to file your application for you in that office.
Thirty months from your priority filing date, when your PCT application is ready to enter the "National Stage" in the USA, Brown & Michaels can handle the US national filing for you and prosecute the US application in the USPTO.
We should also note that many countries have rules governing whether or not you must file first in your home country before you file anywhere else - for inventions made in the USA, for example, you must apply for a "foreign filing license" before you file in other countries (this is automatically done when you file a patent application, and is usually granted with the filing receipt). Each individual situation is different. You should consult with your home country patent attorney about your case before making any decisions.
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