“Because the Patent Cooperation Treaty allows applicants to defer making a decision where to ultimately seek a patent for 30 months from their initial filing date (i.e., the earlier priority date for the application), it is viewed as quite favorable, particularly for applicants who do not know whether they will ultimately want or need broad based international protection.”
The Patent Cooperation Treaty (PCT) enables applicants to file one application, called an international application, in a standardized format in an authorized Receiving Office, and have that patent application treated as a regular national patent application in all Member Countries to the PCT. The PCT also provides for the establishment of an international search report and written opinion and publication of the international application after 18 months from the earliest priority date.
Timeline and Choice
Aside from being cheaper compared to filing directly in every PCT Member Country individually, which would be unthinkably expensive, the applicant has up to 30 months to actually decide where to receive a patent. This is because: (1) PCT timelines are tied to the initial priority date of the application, not necessarily the filing date of the international application; and (2) applicants have up to 30 months to enter the national stage for all Member Countries except for Luxembourg and Tanzania, which require entry into the national stage within 20 months unless a demand for international preliminary examination has been made.
For example, if an international patent application is filed on January 25, 2021, and does not claim the benefit of any earlier filed patent application, the applicant will have 30 months from the filing date to decide where to ultimately pursue a patent. The applicant received 30 months from the filing date because the international filing date and earliest priority date are the same. Said another way, in this example the applicant has 30 months, or until July 25, 2023 within which to enter the national stage in any country (other than Luxembourg or Tanzania) where a patent is desired.
In a second example, the applicant first files a patent application in Germany on February 26, 2021, which does not claim the benefit of any previously filed application. An international application is subsequently filed on December 30, 2021 claiming the benefit of the earlier filed German application. The applicant will have 30 months from the initial filing (i.e., February 26, 2021) to enter the national stage in any country where a patent is desired, which means the applicant has until August 26, 2023 to enter the national stage.
Because an international filing pursuant to the PCT allows applicants to defer making a decision where to ultimately seek a patent for 30 months from their initial filing date (i.e., the earlier priority date for the application), the PCT is viewed as quite favorable, particularly for applicants who do not know whether they will ultimately want or need broad based international protection. Applicants can decide later after the invention and the market has developed and matured whether they need or want a patent in a particular country or countries.
Pros and Cons
Generally, it is said that if you know where you are going to want a patent it is cheaper and quicker to file directly in those countries. It is certainly quicker because you do not spend time in an international phase and go directly into the examination queue. It is also cheaper because you do not spend money on the international phase. Furthermore, while the initial filing fee for an international application beats filing in every country, it isn’t exactly cheap. So, if you know where you want a patent you can cut out the international filing fee and the international stage fees. You also don’t get the benefit of starting down the path to secure worldwide rights either.
Of course, it is worth pointing out that, technically, any properly filed application (i.e., with adequate support for the disclosed invention) can be the basis for a priority claim within 12 months under the Paris Convention. Indeed, as pointed out above in the second example, a PCT application can be filed claiming the benefit of whatever earlier (i.e., first) application was filed within the previous 12 months.
It is difficult really to give much general advice on when the PCT process is best. Notwithstanding, it is probably fair to say that the PCT process is most popular with and best suited for large multi-national corporations that routinely seek patents in many jurisdictions, such as pharmaceutical companies for example. The PCT process is also likely advantageous when there is a clear global need and likely markets exist around the world. The PCT process is also appropriate for anything involving standard essential patents, where a worldwide portfolio is a necessity, and for universities with important, paradigm shifting innovations. The PCT process is likely out of reach and unnecessary for independent inventors in all but the rarest cases.
Join the Discussion
25 comments so far.
AnonFebruary 20, 2021 09:56 am
Your denial is simply not persuasive.
It is well understood that you admire ‘certain things.’
It is also well understood that you deplore ‘certain things.’
The cognitive dissonance arises because no matter how much you SAY that you deplore ‘certain things,’ such NEVER stops your “EPO Uber Alles” shilling.
Not even here, when someone raises a negative point. Your reaction is to DISMISS the negative point (if that point conflicts with — or causes cognitive dissonance with — your shilling).
As I stated, you do not even realize that you ARE displaying cognitive dissonance.
MaxDreiFebruary 19, 2021 12:41 pm
No cognitive dissonance. I admire the caselaw of the Boards of Appeal of the EPO, established over the last 40 years, covering the substantive patentability of inventions. I deplore the actions and behaviour of the President of the EPO and the shareholders of the EPO (its Administrative Council) over the last decade. Protestations by the present and immediate past President, that “quality” is the priority and is going up progressively, are dissonant with ever greater pressure on Examiners to deliver ever higher “productivity”. A production line for patents is not the same as a line to make identical widgets, or to convert animal carcases into bite-sized pieces of meat for sale in supermarkets. Inventors, Applicants, innovative corporations, and the general public all deserve better than that. Every single patent application presents unique challenges for the examination of its patentability.
AnonFebruary 19, 2021 09:32 am
ipguy @ 20,
Even as he himself inserts a situation (now several years old, and covered in quite some detail at IpKat – is that still a thing?), the cognitive dissonance between his wanting to sound an alarm at the (past) trend of the EPO – and the instant comment denigrating some results of the EPO – and his ever-present shill mode of EPO-Uber-Alles is on prime display.
And I bet that he does not even realize it.
BPFebruary 18, 2021 02:48 pm
Where’s the discussion on the link between ISR/ISA and costs when entering the national stage/phase? USPTO and EPO offer different cost schemes, which can depend on results/ChII amendments, etc. Selecting USPTO or EPO by itself does not tell the whole cost story. Isn’t that something clients should be aware of?
IamIFebruary 18, 2021 09:02 am
I remember those days ipguy. Now all examiners get are the rare Chapter II requests.
ipguyFebruary 17, 2021 09:47 pm
“Back in the old days” at the USPTO, Examiners did the search instead of it being outsourced to a vendor. Once Examiners did the PCT Search and sent that out, they’d immediately send out an Office Action for the US counterpart. Since they had done the search themselves, they didn’t have to review the work of the vendor to make sure it wasn’t fecal matter.
IamIFebruary 17, 2021 07:02 pm
I think it’s clear Max finds it impossible that his beloved EPO can do a bad job at finding prior art.
AnonFebruary 17, 2021 02:48 pm
MaxDrei has ALWAYS had a difficult time not being a shill for EPO Uber Alles.
MaxDreiFebruary 17, 2021 02:42 pm
Yes, iami, but it might depend on whether the cite is in category X, Y or A. Under the EPO approach to obviousness, one needs A references (general technological background) to set the scene for the enquiry.
Doesn’t the EPO opinion make clear to you the reason why each ref was cited?
IamIFebruary 17, 2021 11:44 am
Max, perhaps that which is terrible is simply objectively terrible under anyone’s standard. It’s not an EPO vs USPTO issue, it’s a why the art was cited at all because it’s not at all relevant issue.
BennyFebruary 17, 2021 12:40 am
I’ve also seen some rubbish opinion from the EPO, but on the whole not as bad as the USPTO. The advice I received from our attorney was to ask the Koreans if I want a job well done, partly because they often cite prior art which isn’t published in English.
MaxDreiFebruary 16, 2021 04:16 pm
Thanks for that, lami. There has been much talk, recently, of management pressure inside the EPO, demanding of its Examiners greater “productivity”, that is, doing fewer hours of work for the same search fee paid by the Applicant. I had not realised though that this has gone as far as to routinely result in “terrible” art being cited. Perhaps that which is “terrible” for patentability examination at the USPTO is not so “terrible” when it comes to patentability examination outside the USA, in particular under the problem-solution approach operated at the EPO?
AnonFebruary 16, 2021 04:07 pm
Plus, I think that MaxDrei also misses the point with his “story” of the Rolls-Royce salesman (and his assumption that the strategic choice of which search authority is necessarily tied to the “more expensive” option of actually pursuing patents at some far-extensive reach of multiple sovereigns.
Sadly, he does not seem to realize just why his first foray was so insulting, and does not get that a better starting point (for any number of selected Sovereigns to enter) just might be something that an applicant WANTS to have (because — shockers — applicants may actually want to have valid patents).
It reminds me of the old Malcolm Mooney (false) view that applicants somehow only wanted cheap and easy patents with no real examination.
Such may be so for select cases, but the (far larger) majority do want solid examination.
That such “pro-patent folk like myself assert this was something that Malcolm could never understand -mainly because he was simply anti-patent.
IamIFebruary 16, 2021 03:59 pm
You’re missing the point. The mind boggling decisions I’ve seen lately from EPO examiners comes from citing terrible art against the claimed invention. The prior art cited needs to be good to begin with.
MaxDreiFebruary 16, 2021 03:47 pm
Two interesting comments, at 9 and 10.
ipguy, you remind me of the man who asked the Rolls-Royce salesman about the fuel consumption, and the answer he got, namely, if you ask that question, you can’t afford to buy the car. If you are seriously contemplating entering the national phase at 30 months, with the staggeringly high costs involved, then the cost of an EPO search report is trivial. I mean, it’s a bit of a bummer to pay all those national phase costs and only after that get served up with the patentability-destroying prior art presented to you in the EPO search report. On entry into the EPO national phase, you don’t have to pay the EPO all over again, to do its search all over again, do you?
lami, I agree. One pays for an EPO search not for the opinion of a single EPO Examiner but rather for the prior art references brought to light by the EPO search.
Anybody care to differ?
IamIFebruary 16, 2021 02:22 pm
An EPO opinion on patentability isn’t always what MaxDrei makes it out to be. I have seen some truly mind boggling decisions from them lately that I flat out ignore.
That being said, as AAA JJ said, don’t use the US for the ISA. Unless you really are okay with a contractor writing your search report and preliminary examination.
ipguyFebruary 16, 2021 01:19 pm
Unless the US applicant is a large entity, the cost difference between selecting the EPO as the ISA and the US as the ISA can be a significant consideration.
AnonFebruary 16, 2021 12:56 pm
And yet again, MaxDrei, your last post does not address the reason why I took issue with your first post.
Are you going to continue to be rude and ignore the point put to you?
MaxDreiFebruary 16, 2021 11:30 am
Would Mr Quinn care to comment on the question, which Patent Office to choose as the International Search Authority? USPTO, EPO, or the Korean Patent Office?
AnonFebruary 15, 2021 12:56 pm
Your reply at 4 does not address my criticism of you, MaxDrei.
Why not ask this (better) question from the start, instead of taking an unwarranted dig at applicants?
AAA JJFebruary 15, 2021 10:55 am
I have never recommended to a U.S. applicant who filed a PCT that they pick the USPTO as the ISA and/or the IEA.
MaxDreiFebruary 15, 2021 10:08 am
Fact is, anon, amongst the PCT national phase cases I receive from various US patent law firms for filing in Europe, some have procured their international patentability search and opinion from the EPO. But at least as many choose the USPTO. Why that then?
AnonFebruary 15, 2021 07:35 am
How impolite of you.
Of course, most all people want the very best examination and understanding of the patent landscape as possible (with the full understanding that ‘as possible’ carries a cost/benefit scale).
To coyly insinuate otherwise is to imbue your own emotions on others and subtly accuse them of playing games, while being on the surface ‘polite’ about it.
It is this type of lack of directness and just under the surface CRAP that distinguishes your onw whining about others being impolite to you as nothing more than you being a coward on those areas of patent law discussion to which directness is brought to bear.
You had a decent enough point here (there are options of International Search Authority to be explored), but you muck it up by attempting to be too clever by half.
Can the false politeness.
MaxDreiFebruary 15, 2021 02:44 am
An interesting dilemma for Applicants from the USA is whether to choose the EPO (instead of the USPTO) as International Search Authority. I mean, people, do you really want the sobering experience of digesting an EPO opinion on patentability already before it’s time for you to decide whether to enter the national phase, 30 months from your US priority date?
BPFebruary 14, 2021 06:46 pm
Great post. The PCT buys time while we in the US sit back and watch the nonsense continue hoping that by the 30 month deadline, something may change, even though there’s little hope of that.
Director Iancu tried, a brilliant person, yet he could do only little, which the Fed Cir ignores and Hirshfeld will rush to undo. Talk about the damage to mirco and small entities by the huge pandemic era increases in fees.
The surcharge on a late 3.5 yr maintenance fee rising from $80 to $250, with the underlying fee rising from $800 to $1000. Late in the past was $880, today it’s $1250. Thanks Drew, that’s over 40% more! (wink wink) Is that to make up for the decline in filings so you can be assured your pay/benefits won’t be cut?
Certainly, some other countries have more stable and fair patent systems. Again, why PCT is a good option.
To be fair though, the PCT Help Desk is one of the best things going at the USPTO. Seminars by Reed and Bidwell were excellent, a class act. When examiners don’t know all the rules for 371 applications and the contractors that review incoming 371 applications miss stuff from time to time, the PCT Help Desk is always there to help make things flow. Great job!