The PCT International Application

Some Important Things to Understand if You Intend to File Foreign.

The PCT it can be a bit confusing. Let's talk about the key points behind it. PCT stands for the Patent Cooperation Treaty. It is administered by WIPO - the World Intellectual Property Organization.

First of all, it is not itself a patent. I once heard someone say that they wanted one of those World Patents. It is not a World Patent and it never , in itself, becomes a patent. Still - it can be very, very useful.

The usefulness comes from timing. Understand that without this vehicle, if you file a first patent in the US Patent Office (or any countries patent office) you are under the rules of an older treaty called the Paris Convention. Under the Paris Convention you have only 12 months before you must file you foreign patents. 12 months is a very short time to know whether you have 1) a real market for your invention and 2) a technically and cost effective invention. So you can be faced with an expensive filing decision too early in the game.

But the PCT gives you a lot more time. In the scenario I just described at the 12 month point you can elect to file a PCT instead of all of the foreign patents. Then you have an additional 18 months before you have to make the bigger foreign filing decision.

With this approach you can file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the US Patent Office). Once you do that you can return to the running your business. I always give my clients the metaphor of a poker game. By anteing up the cost of a PCT they get to look at some more cards before making the bigger bets later.

And if you do conclude 15 months later that you don't really want to pursue this invention you have saved a great deal of money.

But it is not free. The filing and searching fees can add up to over $2800 U.S. But if you are seriously considering filing foreign this can be a prudent investment because the foreign filings will be much more expensive.

So What About your Competitors During This Delay?

Important question. In the example I gave, when you filed your first patent in your home country you established your priority date. When you file this international application you claim that priority date and you keep it for all your later foreign filings. Example - say you file a US patent on March 18, 2008; then you must file a PCT before March 18, 2009, claiming the priority date of March 18, 2008. You then do not have to file your foreign patents until September 18, 2010. And when you file them they will claim priority all the way back to March 18, 2008. Your competitors cannot (successfully) file for the same invention after March 18, 2008.

There are several other rather complex things you should know. The PCT also provides for an international search report and written opinion that are established normally at 16 months from the priority date, and publication of the international application after 18 months from the priority date. The written opinion is an opinion as to the patentability of your invention but it is not binding on any patent office. However - they will read it - and you and your patent practitioner will certainly read it. It can be a very useful early read on the viability of your application because you often get the opinion before you get your first office action from your home country.

An important understanding for your business is that the first priority date filing in the US Patent Office can be either a provisional or non-provisional filing. In either case the Paris Convention applies and you must make your PCT decision within 12 months. So if you started with a provisional and want to file foreign you could be faced with two filings ( a non-provisional and a PCT) within 12 months.

But there are other possibilities - I will cover those in a separate article on filing strategies. And I will elaborate more in a Part II. As I said it can be complicated.


The PCT International Application
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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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