Maiorana, P.C.

Patent Law - Established 1998

What is a Patent Cooperation Treaty (PCT) application?

I get a lot of questions about what a PCT application covers. Unfortunately, a PCT application does not grant any rights. It only allows the applicant to have the right to continue further international filings in individual countries. A PCT may defer some costs, but ultimately increases the overal costs.

This sounds complicated. In a way it is very complicated. Most Patent Law issues are a bit complicated. In another way, you can look at a PCT application as buying the option to continue international filing. The option comes at a substantial cost. The cheapest PCT filing fees I have seen in the last several years are $3,500. That only covers the government fees, not attorney fees. What does this get you?

First let's discuss international filing without a PCT application. Most countries allow an applicant to claim priority (discussed here) back to a U.S. first filed application. This can be either a non-provisional application or a provisional application (discussed here) . The deadline for international filing is generally one year from the earliest priority date. This means that if an applicant has a provisional application filed on July 1st of one year, then files a non-provisional application in June of the following year, the international filing is due at basically the same time as the non-provisional application was filed - July 1st. This can create budgeting issues, so keep an eye on that.

So instead of filing directly to individual countries or regions (like Japan, Korea, China, EPO etc.), a PCT application can be filed instead. Then the deadline for filing in the individual countries (the national phase) gets pushed out to 30 months from the earliest filing date. If you knew ahead of time which countries you plan to file in, the money spent on the PCT would be better used to file in the individual countries. The PCT is useful when there is simply not a budget for filing internationally. I do often mention to people that if nothing is really going to change in the next 18 months, either with product sales, or investor input, then you should just skip the PCT application. However, if things can be realistically expected to change in that time frame, the PCT application is a good avenue to keep your options open.

A PCT application is considered a foreign filing, so any request to not publish your application (discussed here) , must be revoked when filing a PCT application. That means that your U.S. application will also be published, and the file wrapper will be open to the public for inspection moving forward. If privacy until a patent issues is a concern, that needs to be balanced against the filing of a PCT application.

Once a PCT application is filed, the International Searching Authority will send a search report and written opinion, then an international preliminary report on patentability. These are sent at approximately 18 months and 28 months, respectively. There are two chances to amend the international claims, through an Article 19 and an Article 34 amendment. Each of these amendments will trigger additional costs. Claim amendments at the PCT might be useful if the International Search Authority agrees that the claims are patentable prior to going into the international phase.

The national phase due date for filing is 30 months from the priority date. At this time you must select which countries to file your application in. The application is then filed in each country individually. The costs for filing in individual countries normally ranges from $2,000-$8,000. It is possible to file a regional European application based on a PCT filing (discussed here). Our clients generally find us to be cost effective as an affordable PCT patent lawyer.

  • Chris Maiorana
  • February 2017 - revised 05-31-17, January 2018, April 2018
Topics: USPTO Patent Process, PCT application, affordable PCT patent lawyer, priority date
Related: Patent Priority Date, EPO Patent filing

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