About the Patent Cooperation Treaty (PCT)
There are four types of intellectual property protection a small business needs to know:
- Trade secrets
Trademarks are short phrases and symbols for identifying a company or brand. Copyrights are available for original authorship, such as literary and dramatic works. Patents are inventions — products or processes — that provide a new way of doing something.
Many intellectual property laws stretch across nations. Meaning intellectual property can receive protection in places other than their home countries.
The Patent Cooperation Treaty is an international treaty. The World Intellectual Property Organization (WIPO) administers the PCT. The Patent Cooperation Treaty (PCT) is essential for patent law. PCT provides a smooth process for filing patent applications in many member countries. The PCT simplifies the process of filing patent applications. The PCT allows applicants to seek protection for their subject matter across many countries. It allows this through a centralized transmittal system. The PCT is open to countries party to the 1883 Paris Convention for the Protection of Industrial Property. The PCT concluded in 1970, then amended in 1979, and modified twice, in 1984 and 2001. Visit FindLaw's section on intellectual property for more information and resources about:
- Trade secrets
What Does the PCT Do?
The Patent Cooperation Treaty allows inventors to file international patent applications. This gives their inventions patent protection in several countries. An inventor may file a PCT application if they are a national or resident of a contracting state ("member state"). A contracting state means the country is a party to the PCT. Contracting states have agreed to provide a unified procedure for filing patent applications.
Inventors can file the PCT application in:
- Their national patent office. For example, a U.S. citizen or resident can apply with the U.S. Patent and Trademark Office (USPTO).
- The International Bureau of WIPO in Geneva, Switzerland
- A regional patent office (“receiving office"). The United States Patent and Trademark Office acts as the receiving office. The USPTO also performs other functions related to the PCT process for U.S. applicants. The European Patent Office (EPO) is a regional patent office. The EPO grants European patents like how the USPTO grants American patents. These intellectual property offices are both considered member states of the PCT system.
A receiving office:
- Processes the application
- Establishes a filing date
- Performs formality checks
- Collects filing fees
The PCT Process
There are two phases in the PCT process. Chapter I involves the international search and preliminary examination of the application. Chapter II consists of the applicant requesting an international preliminary examination. The Chapter II examination request is optional. But it provides a detailed analysis of the invention's patentability.
The Patent Cooperation Treaty process begins with a person filing an international application. Then the International Searching Authority (ISA) conducts an international search for a search fee. The search fee is for conducting searches to identify relevant prior art documents. The International Searching Authority is one of the central patent offices appointed by the PCT Assembly. The International Authorities generate an international search report.
The International Authorities also produce a written opinion. The written opinion discusses whether the invention is patentable. Once the applicant receives the ISA's international report and written opinion, the applicant can either withdraw or proceed with the application.
If the application is not removed, the application and the international search report proceed to international publication. The international report publishes them. The written opinion is for the applicant's benefit and is not published. The International Preliminary Examination Authority (IPEA) also examines the PCT application. IPEA examines to determine if the invention meets the patentability criteria. IPEA evaluates the following:
- Inventive step
- Industrial applicability
The international phase usually lasts 30 months from the international application priority date. At that point, the PCT application enters the national phase, also known as the national stage. The applicant then pursues the grant of patents in specific countries. The applicant files individual applications for each country in national or regional patent offices. The inventor must pay periodic maintenance fees to the regional or national offices. The fees help ensure the continued protection for the granted patent.
In the PCT patent system, amendments made to the PCT applications concern:
- Drawings to enhance patentability
It is important to note that the PCT system does not grant patents. The PCT process provides a direct procedure for filling and searching. The PCT process allows applicants to seek protection in many member countries.
Advantages of the Procedures Provided by the PCT
The procedures set by the Patent Cooperation Treaty provide various advantages. Patent offices reduce or cut the work of searching and examining a patent application using international search reports and written opinions. The published international search report allows third parties to develop an opinion about whether the invention is patentable. The time limit to decide whether to seek patent protection in foreign countries is 18 months. At that point, the applicant takes the necessary steps to seek foreign protection. Protection includes appointing local patent agents, translations, and paying national fees. When an applicant uses the PCT application, the designated office only accepts it on formal grounds during the national processing phase.
Getting Legal Advice
Do you have questions about patent protection or the patent application process? If so, contact an experienced patent attorney. For more information about intellectual property, visit the official website of the United States Patent and Trademark Office at uspto.gov. For more information about worldwide intellectual property matters, visit the official website of the World Intellectual Property Organization at WIPO.int.
You Don’t Have To Solve This on Your Own – Get a Lawyer’s Help
Meeting with a lawyer can help you understand your options and how to best protect your rights. Visit our attorney directory to find a lawyer near you who can help.
Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.