Chapter §25.03 The Patent Cooperation Treaty

• Jurisdiction: United States

§25.03 The Patent Cooperation Treaty

[A] Introduction

The Patent Cooperation Treaty (PCT),⁶¹ which entered into force on January 24, 1978, provides a procedural framework for efficiently exploiting the right of priority created by the Paris Convention. In short, the PCT greatly simplifies the procedures for obtaining patent protection for an invention in multiple countries. The PCT has proven popular; 253,000 international applications were filed in 2018 under the treaty.⁶² Like the Paris Convention, the PCT is administered by the WIPO. The text of the PCT and a list of PCT contracting states (i.e., signatory countries) are available on the WIPO's Web site.⁶³

[B] International Application Processing

The PCT created a system of "one-stop shopping" in which an applicant, so long as she is a national or resident of a PCT contracting state, can file a single "international application"⁶⁴ with the patent office of her home country (acting as a PCT "receiving office") or with the International Bureau of the WIPO in Geneva, Switzerland.⁶⁵ Through designation of any or all of the PCT contracting states, the international application will have the effect of a national patent application in each designated contracting state.⁶⁶

The applicant also may claim for the international application the benefit of the filing date of an earlier-filed application in a Paris Convention country (typically the applicant's home country), if applicable.⁶⁷ In such cases, the applicant will file her PCT international application within 12 months of filing her priority application on the same invention in her home country patent office.⁶⁸

The international application will be searched against the prior art by a PCT international searching authority.⁶⁹ A copy of the application, together with the results of the search, will be published at approximately eighteen months after the priority date,⁷⁰ and these materials will be transmitted by the WIPO's International Bureau to the national patent offices of each designated contracting state.⁷¹ An applicant additionally has the option of requesting an International Preliminary Examination of the application.⁷²

[C] National Phase

The key cost-saving feature of PCT practice is that the treaty permits the applicant to delay entry into the "national phase," that is, entry into patent prosecution in the national patent office of each designated contracting state, for a considerable period of time: up to 30 months after the priority date in most cases.⁷³ This ability to delay entry into the national phase gives the patent applicant more time to assess the marketplace for the invention and temporarily postpones incurring the considerable costs of the translations, filing fees, attorney fees, and the like that are required to prosecute patent applications to issuance in each national patent office.

The most fundamental feature of the PCT procedure is that it results in only a single international application, not a single granted patent or even a bundle of national patents (as does the European Patent...