What is a PCT patent and why should I choose it?

Most individuals begin their patent process by filing an application in their home country (in this case, the U.S.), and before the 12-month deadline, begin considering seeking patent protection in foreign countries. In this case, there are two basic options. The first option is to file an application directly (and separately) in each country on or before the 12-month anniversary of filing the first U.S. application.

If the countries in which you are seeking foreign patent protection are all signatories of the Patent Cooperation Treaty (PCT), then you may also choose the second option – the PCT process. A PCT patent is not an international patent. A PCT application can be a strategy to ‘buy time’ while you determine whether or not foreign patent protection is a viable option. Essentially, a PCT application preserves the right to seek a patent in each of the PCT contracting states. It also provides up to two substantive examinations by a patent examiner. Finally, it extends the 12-month deadline to file in each PCT country (from filing the U.S. application) to 30 or 31 months from the U.S. filing date.

Filing the PCT application marks the International Phase. Your application is filed with your choice of one of the International Searching Authorities (ISA), generally either the U.S. Patent and Trademark Office, the European Patent Office or the Korean Intellectual Property Office. In the International Phase, the ISA performs an examination of your application and prepares an International Search Report and Written Opinion. These documents help determine the likelihood of obtaining foreign patent protection based on novelty, inventive step (non-obviousness) and industrial applicability. The International Search Report and Written Opinion are meant to be informative, and are non-binding.

The International Search Report and Written Opinion can be favorable or unfavorable, and you can choose to challenge the findings or not. If you choose not to challenge, the Written Opinion becomes the International Preliminary Examination Report (IPER) and is available to the patent offices in the PCT countries when you seek foreign patent protection.

Alternatively, you may choose to respond to an unfavorable Written Opinion by submitting statements and/or amendments and requesting a second examination, called a Demand for International Preliminary Examination. From this, the examiner issues the IPER.

At this point, the application enters the National Phase, wherein patent applications are translated and filed individually in each foreign country that the applicant chooses after paying the governmental filing, translation and professional fees.

Even though the applications must ultimately be sought in each individual country (and the fees must be paid for each, as well), there are significant benefits to the PCT process. Most notably, you have the opportunity to determine your chances of obtaining foreign patent protection before incurring the excessive costs of applying in each country. It also extends the timeframe to find sources to fund the endeavor. By filing a PCT application, all PCT countries honor a single application and standardized procedure (as opposed to preparing and filing separate applications for each country). With these points in mind, the PCT process should be seriously considered to make an informed decision before seeking widespread and expensive global patent protection.

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