What is the Patent Cooperation Treaty (PCT)?
Clients often ask us if they can file a worldwide patent. Unfortunately, the answer is that you can’t. The Patent Cooperation Treaty (PCT) enables you to file one application. This single application safeguards patent protection simultaneously across a large number of countries (157*). Upon concluding the “international phase,” you have the option to convert your international application into national applications. This process is commonly referred to as “entering the national phase.” You can pursue this in as many countries as desired. Ultimately, continuing in many countries will be expensive. However, the PCT international phase provides ample time to save up, test the market for your invention, and evaluate the opinion of an international search authority on the likelihood of patent approval. This allows you to make informed decisions before committing funds to patents globally.
Know about PCT
The PCT can be your first patent application for your invention, but it is usually more cost-effective to file a single national patent application first, for example with the UKIPO. Your PCT must then be filed within 12 months of the first national patent application filing date (also known as the “priority date”).
If you do opt to file a PCT, you will need to pay substantial fees and meet all of the formality requirements. Afterwards, an international search will determine the existence of any “prior art” (disclosures of similar ideas published before your priority date) that might impact the patentability of your invention, leading to the production of a written opinion. This is helpful as you can then make amendments to your patent application to address the prior art before committing costs to the national phase.
The PCT is therefore a mechanism that gives you more time to decide which specific countries you might seek a granted patent from. In addition, you can opt to have supplementary searches carried out and also an international preliminary examination (though this does incur additional costs). This is a more detailed analysis of the patentability of your application after you have made amendments and/or submitted arguments in reply to the written opinion. This aids in assessing the likelihood of patent approval in desired countries without incurring filing costs or risking unfavourable results.
Your international application discloses its content to the world as an international publication approximately 18 months after the priority date.
At the end of the PCT international phase, usually around 30 months from the priority date, you can then enter the national phase and pursue the grant of patents directly in the national or regional offices of the countries in which you wish to obtain protection.
Why should you choose PCT?
Choosing the PCT route offers benefits. It delays filing and translation costs for the countries you choose. Additionally, it provides time to identify the most commercially advantageous markets for your innovation before committing funds to protect it. However, there are disadvantages. Filing fees for a PCT are high, and you still incur costs when deciding the countries for filing. Consequently, overall costs can be higher. Alternatively, you can opt to file multiple national patents at the 12-month deadline. If you have many countries in mind, the initial costs of national filings can be significantly higher than a PCT filing.
You should note that there are still a few significant countries that are not part of the PCT e.g. Taiwan. For these countries, you would always need to file directly in the national office at the 12-month date. You should factor this in when deciding the best route for you. When it comes to the 12-month deadline, we can advise you of the most cost-effective route to achieve your goals.
If, at the end of the international phase, you choose to enter the national phase in multiple European countries, the EPC system can be utilized for this purpose. This covers both EU and non-EU members (approx. 40 countries) and is a cost-effective mechanism for protecting in multiple EPC contracting states.
After the international phase, if you wish to file in countries such as China, the USA, Canada, and Australia; you would subsequently enter the national phase. This involves filing directly with the patent offices of those countries.
How can Pure Ideas help you?
Pure Ideas is dedicated to helping clients protect their ideas and innovations. If you are curious about how we can help you protect your ideas, please contact us.
*Data from 2023
