The Patent Cooperation Treaty (referred to hereinafter as “PCT”) is an international treaty that authorizes the filing of a single patent application to be treated as being filed in multiple countries. An applicant may file a PCT application pursuant to the PCT rules, and the PCT application will act as a word-wide patent application where an inventor can designate which countries they wish to pursue patent protection in. The initial cost for filing a PCT application includes a $240 transmittal fee, a $2,080 search fee, and a $1,453 filing fee.
PCT applications are a popular choice for applicants who desire foreign filing patent applications in three or more countries because the fees will be cheaper than having to directly file an application in each of desired countries and an applicant will have up to 30 months to decide what countries they desire patent protection in.
A PCT application includes three main stages, first, filing a PCT application; second, receing an office action; and third electing which countries they desire patent protection in within 30 months of the PCT filing or priority date. This 30-month period is a notable advantage to PCT filing where an applicant can delay costs associated with filing foreign applications.
To initiate the PCT process, an applicant must first file a PCT application in a national receiving office (the USPTO qualifies as a national receiving office). After filing a PCT applicant, the applicant will be published 18 months after the filing or priority date. There are various costs associated with filing a PCT with different receiving offices, and for various reasons I recommend my clients filing their PCT applications with the USPTO.
Sixteen months from the priority date of a PCT application, a single search is performed by the receiving office (USPTO) to generate an international search report (ISR) along with a written patentability opinion (WO). The ISR/WO serves to narrow the issues for the national patent offices where it is desired to option patent protection, point out potentially novel features, and locate prior art references that may disclose the applicant’s invention.
Generally, the ISR/WO, is published along with the international application.
After receiving the ISR/WO an applicant has four options as to how to proceed. However, no matter which option an applicant chooses within 30 months from the priority date of the PCT application, the applicant must elect which countries he desires to obtain patent protection from and enter the “national stage.”
The following are the four possible ways an inventor may proceed:
1) Do nothing and wait until national/regional stage to address issues raised in the ISR/WO,
2) File informal comments associated with the ISR/WO,
3) File Article 19 Amendments, or
4) File a demand for an international preliminary report on patentability (IPRP).
1) If the applicant chooses to do nothing, the ISR/WO will stand unchallenged and formal arguments may be presented for the first time at the national/regional stage of prosecution. This option is generally elected if there is a favorable ISR/WO, or if an applicant chooses to delay costs associated with filing a demand for an IPRP.
2) If the applicant chooses to file informal comments, the applicant has a chance to provide his/her arguments on the record to a national receiving office. However, the arguments will not be reviewed or commented on. I do not recommend filing informal comments without claim amendments because they may just add additional prosecution history, which may become an issue later if the patent is litigated.
3) If the applicant chooses to file Article 19 amendments, the claims may be amended in response to the ISR/WO. In this case, the ISR/WO may be used as a “first office action.” The amended claims must be filed within two months of the mailing date of the WO/ISR. Unfortunately, if an applicant makes claim amendments under article 19, the applicant is unable to file formal comments in the response. The amended claims will be the claims provided to each elected national/regional country. I recommend this option if it appears that claim amendments will be necessary based on the cited art and/or comments made by the examiner.
4) If the applicant chooses to file a demand for an IPRP, the applicant has a chance to amend his claims and file formal arguments before the patent prosecution procedure begins in the elected national/regional countries. Therefore, by requesting an IPRP an applicant’s application may be reviewed by a receiving office and can be used to reduce the number of objections that will need to be addressed later during the national/regional phase. I recommend this option if there seems to be a misunderstanding with the examiner or if a negative WO/ISR has been received.
After filing a PCT application, it is necessary to enter in the “national phase” within 30 months for every country where the applicant wishes to obtain patent protection. For national phase filing in the U.S, an applicant must file the national fee; a copy of the international application and an English translation of the international application, if it was filed in another language; and an oath or declaration of the inventor complying with U.S. regulations.
At this point obtaining patent protection in multiple countries may become expensive because an applicant will have to pay national fees for each country and obtain translations of the application in other languages. A benefit of filing patent applications in multiple countries is that the prosecution of each patent may be similar, therefore reducing the average cost for prosecuting each patent in different countries. The following are sample fees for filing a patent in the corresponding jurisdictions. These are costs for filing a patent and do not include subsequent costs associated with prosecution.