While U.S. patent provide protection for inventions in the U.S., no protection is provided outside the U.S. To obtain patent protection in foreign countries, an inventor (or applicant) must file a patent application in the particular foreign country they are seeking protection. One type of international patent filing is a PCT application.
The PCT application is a type of international patent application that was provided for by the Patent Cooperation Treaty (PCT) which is an international patent law treaty ratified in the 1970’s. It establishes a worldwide procedure for filing patent applications in numerous foreign countries. A patent application filed under the PCT is called an international application, or PCT application and may be used to eventually file patents an almost all foreign countries.
A PCT application does not itself result in the grant of a patent. It is best considered a place holder to secure an applicant’s place in line and provide the option for future filings in foreign countries. Eventually, a patent application will have to be filed in each foreign country in which protection is sought and these foreign patent applications will claim priority to the PCT application. There is also the option for an EPO (European Patent Office) filing that undergoes a single examination but must be validated in each EU country of interest.
There is no such thing as an “international patent” to covers every country, and the grant of patent in a foreign country is a prerogative of each foreign Patent Office, just as the U.S. Patent Office control patent grants in the U.S. Thus, a PCT application, which establishes a filing date in most all foreign countries, must be followed up with the filing of a patent application in each foreign country in which patent protection is sought. Of note, patent protection in Taiwan and Macau is not available based on a PCT application. To secure patent protection in Taiwan and Macau, direct filing must be made within the designed time limits.
To file a PCT application, the patent application with figures, along with a PCT Request is submitted to a Patent Office that is designated as a Receiving Office for the inventors or applicant. The U.S. Patent Office is the Receiving Office where most U.S. based PCT applications are filed. The Receiving Office performs a search accompanied by a non-binding Written Opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA).
As referenced above, the PCT application never matures into a patent. At 30 or 31 months from the priority date, the PCT application expires. Before the expiration the PCT patent application, a patent application must be filed in each country of interest. This is referred to as a national stage filing that claims priority to the PCT application. The patent application filing in each foreign country is examined by that country’s Patent Office leading to the eventual grant of a patent or denial of a patent. Thus, a PCT application provides a convenient, uniform process for applicants to obtain patent protection in any number of foreign jurisdictions. Weide & Miller, Ltd suggests working with an experience patent attorney for PCT application filings and national stage foreign filings strategies.
