Monday, September 04, 2023 8:57:03 AM
Deciding between these approaches can depend on several factors, such as your stage of funding, the maturity of your technology, how quickly you need the protection, and whether you know yet which markets you’ll be targeting. If commercialization of your invention is imminent, time to patent (i.e., speed) might be your primary goal, and filing patent applications directly in each target market may be appropriate. If your development and/or funding efforts are still ongoing, however, the deferral of costs, as well as of the decision as to where specifically to file, may be desirable. That’s when a PCT application comes in handy.
What is a Patent Cooperation Treaty (PCT) application?
A PCT Application is a “placeholder” utility application that establishes a filing date for your invention, and that can subsequently be “nationalized” in any of the more than 140 countries that are members of the PCT. For a given invention, a PCT application can be the first patent application you file, or it can claim priority to an earlier-filed application (e.g., a U.S. provisional or first-filed non-provisional application). You generally have 30 months (longer in some jurisdictions) from your priority date (from the PCT filing date or from the filing date of the earliest-filed application, if you have one) to nationalize it.
How does the PCT process work?
Filing – You begin by filing the PCT application and specifying an International Search Authority (ISA), which is the patent office that will perform an initial review of the claims in your PCT application.
Search – Your designated ISA searches for prior art. It identifies what it deems to be relevant prior art in an International Search Report (ISR). It also issues a non-binding Written Opinion (WO) containing its view on the patentability of the claims as filed. The U.S. Patent Office, when designated, aims to issue the ISR and WO issue within 9 months of the PCT filing date if the PCT application is the first application, or 16 months from the priority date if the PCT application is a subsequent filing. If the WO is favorable, you can enter prosecution early in some jurisdictions. If the WO is not favorable, you can amend the claims during the PCT process, amend the claims before nationalization, amend the claims after nationalization in each individual country, or allow the PCT application to expire without nationalizing it.
Publication – The PCT application publishes approximately 18 months after the priority date.
Supplemental Search Option – You can request a supplemental search during this “international phase” as well, and may amend the claims beforehand.
Nationalization – Within 30 months (longer in some jurisdictions) from your priority date, you must “nationalize” the application in any of the more than 140 member countries that you desire. At this point you will incur costs for translation preparation and application filings in each of your selected jurisdictions.
Foreign Prosecution – Each of your nationalized patent applications will then follow their own respective, country-specific procedures for prosecution to grant. The PCT application itself simply expires, and never issues as a patent. There is no such thing as an “International Patent.”
What are the benefits of PCT applications?
Time and Cost Deferral: By filing a PCT application instead of filing directly in each country of interest, you get up to 30 months from your earliest filing date (longer in some jurisdictions) to consider your international filing strategy, obtain funding, refine your claims, etc.
A Search is Included: The ISR and Written Opinion provide a preliminary indication of material prior art and patentability. They can inform your decision about where to file, as well as the claims to pursue. Additionally, any claims deemed patentable in the Written Opinion qualify, in some jurisdictions, for expedited entry into prosecution via the Patent Prosecution Highway.
Publication: The published PCT application is free advertising and creates prior art against competitors.
Accelerate U.S. Examination: A parallel U.S. non-provisional patent application may be picked up for examination by a U.S. examiner sooner because the search in the PCT application has already been conducted.
Recent ENZC News
- Small Cap Recipient of Military Drone Technology • InvestorsHub NewsWire • 11/20/2023 01:14:45 PM
ECGI Holdings Announces LOI to Acquire Pacific Saddlery to Capitalize on $12.72 Billion Market Potential • ECGI • Jun 13, 2024 9:50 AM
Fifty 1 Labs, Inc. Announces Major Strategic Advancements and Shareholder Updates • CAFI • Jun 13, 2024 8:45 AM
Snakes & Lattes Opens Pop-Up Location at The Wellington Market in Toronto: A New Destination for Fun and Games - Thanks 'The Well', PepsiCo, Indie Pale House & All Sponsors & Partners for Their Commitment & Assistance Throughout The Process • FUNN • Jun 13, 2024 8:18 AM
HealthLynked Introduces Innovative Online Medical Record Request Form Using DocuSign • HLYK • Jun 12, 2024 8:00 AM
Ubiquitech Software Corp (OTC:UBQU) Posts $624,585 Quarterly Revenue - Largest Quarter Since 2018 • UBQU • Jun 11, 2024 10:13 AM
Element79 Gold Corp Files for OTCQB Uplisting, Provides Financial Update • ELEM • Jun 11, 2024 9:25 AM