About PCT

PCT stands for Patent Cooperation Treaty.

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), with 148 countries (and counting!). The PCT makes it possible to seek patent protection for an invention simultaneously in each of those 148 countries by filing a single patent application.

This is a very common misunderstanding. The PCT application has two stages called International Stage and National Stage. If you file the International Stage application and then the National Stage on a country-by-country basis is not pursued, then you will get no patent protection at all. By filing the international stage application you have more time to file in those countries you are interested in. However, a single registration is not valid in all the countries of the world.

Once you file a local patent application in your country, you have one full year for filing the PCT International Stage application. WIPO will consider the local patent application filing date as the filing date of your international application.

This is the list of countries members of the Patent Cooperation Treaty:

  • Albania, Algeria, Angola, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan;
  • Bahrain, Barbados, Belarus, Belgium, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Brunei Darussalam, Bulgaria, Burkina Faso;
  • Cameroon, Canada, the Central African Republic, Chad, Chile, China, Colombia, Comoros, Congo, Costa Rica, Côte d’Ivoire, Croatia, Cuba, Cyprus, the Czech Republic;
  • Denmark, Dominica, the Dominican Republic;
  • Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia;
  • Finland, France;
  • Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau; Honduras, Hungary;
  • Iceland, India, Indonesia, Ireland, Iran, Israel, Italy;
  • Japan;
  • Kazakhstan, Kenya, Kyrgyzstan;
  • Lao People’s Democratic Republic, Latvia, Lesotho, Liberia, Libya, Liechtenstein, Lithuania, Luxembourg;
  • Macedonia, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique;
  • Namibia, the Netherlands, New Zealand, Nicaragua, Niger, Nigeria, North Korea, Norway;
  • Oman;
  • Panama, Papua New Guinea, Peru, the Philippines, Poland, Portugal;
  • Qatar;
  • Romania, Russian Federation, Rwanda;
  • Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, Sao Tome and Principe, Saudi Arabia, Senegal, Serbia, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, South Korea, Spain, Sri Lanka, Sudan, Swaziland, Sweden, Switzerland, the Syrian Arab Republic;
  • Tajikistan, Tanzania, Thailand, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan;
  • Uganda, Ukraine, the United Arab Emirates (UAE), the United Kingdom, the United States of America, Uzbekistan;
  • Vietnam;
  • Zambia, Zimbabwe.

Yes, we can help with filing your PCT International Stage application based on your local patent application. Since you are supposed to file before your local patent office, please contact us at info@inventiaglobal.com and we will provide you with the specific information you need for your particular case.

PCT applicants pay three types of fees when they file their international applications:

  1. an international filing fee of around $ 1,450;
  2. a search fee which can ranges between $ 410 to $ 2,400 depending on the International Searching Authority chosen;
  3. a small transmittal fee which varies depending on the receiving Office ($ 240 in the US).

These fees cover the filing, searching and publication of the international patent application, and are payable in the currency, or one of the currencies, accepted by the receiving Office.

You can file your international application in any language which your local Patent Office accepts. Your local Patent Office is obliged to accept filings in at least one of the following languages: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish.

Once you file an international application, complying with the PCT formality requirements, in one language, and the set of fees are paid, your application will go through the following steps:

  1. International Search: an “International Searching Authority (ISA) ”will perform a patent search to identify published documents which may have an influence on whether your invention is patentable and establishes an opinion on your invention’s potential patentability.
  2. International Publication: WIPO will publish the international application shortly after the expiration of 18 months from the priority date, together with the international search report. You will find your application online on PATENTSCOPE accessible at http://www.wipo.int/patentscope/search/en/structuredSearch.jsf.
  3. International Preliminary Examination (optional): the same authority that performed the search may, at your request, carry out an additional patentability analysis, after international publication.
  4. National Phase: after the end of the 30/31 month period, you have to file local patent applications in all those countries in which you want to obtain patent protection. If you do not do that, you will definitively lose your patent rights.

When the International Stage is completed, you need to file “National Stage” applications in all those countries of your interest. This is a country-by-country filing process in which you need to prepare and file respective patent applications in each country separately. There are some regional applications which cover several countries in one single application. For example, the European Patent Application, the Eurasian Patent Application, etc.

The International Stage is useful to give you an idea if your invention is novel and patentable. If you receive a positive result on your Search Report and on the International Preliminary Examination Report then you have solid grounds for deciding whether it is worthwhile or not to pursue protection in those countries of your interest.

This is when INVENTIA comes into the picture. Instead of contacting several attorneys around the world, dealing with invoices in different currencies, and trying to adjust your application to patent laws you do not know; just let us take the burden off your shoulders. We have representative offices in more than 150 countries where registered local patent attorneys will handle your application with professionalism. You can get a quote for your particular case by clicking here.

Depending on the country, you have 30 or 31 months to file the National Stage applications counting from the date the first patent for your invention was filed. This means that you normally have at least 18 additional months from the filing of your International application before you have to fulfill the national requirements.

This is the list of countries for each deadline:

  • 30 months: African Intellectual Property Organization (OAPI), Angola, Antigua and Barbuda, Austria, Bahrain, Barbados, Belize, Benin (only thru OAPI), Brazil, Brunei, Burkina Faso (only thru OAPI), Canada, Central African Republic (only thru OAPI), Chad (only thru OAPI), Chile, China, Cameroon (only thru OAPI), Comoros (only thru OAPI), Congo (only thru OAPI), Côte d'Ivoire (only thru OAPI), Cuba, Dominica, Dominican Republic, Egypt, El Salvador, Equatorial Guinea (only thru OAPI), Germany, Ghana, Grenada, Guatemala, Guinea (only thru OAPI), Guinea-Bissau (only thru OAPI), Honduras, Iran, Israel, Japan, Kenya, Korea (North), Lao People's Democratic Republic, Libyan Arab Jamahiriya, Luxembourg, Madagascar, Malawi, Malaysia, Mali (only thru OAPI), Mauritania (only thru OAPI), Mexico, Montenegro, Nicaragua, Niger (only thru OAPI), Nigeria, Oman, Panama, Peru, Philippines, Poland, Portugal, Qatar, Romania, Ruanda, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Sao Tome & Principe, Saudi Arabia, Senegal (only thru OAPI), Serbia, Singapore, Spain, Sri Lanka, St. Kitts and Nevis, Sudan, Switzerland, Thailand, Togo (only thru OAPI), Tunisia, Turkey, United Arab Emirates (UAE), United States of America and Zambia.

  • 31 months: African Regional Intellectual Property Organization (ARIPO), Albania, Algeria, Armenia, Australia, Azerbaijan, Belarus, Belgium (only thru EPO), Bosnia & Herzegovina, Botswana, Bulgaria, Colombia, Costa Rica, Croatia, Cyprus (only thru EPO), Czech Republic, Denmark, Ecuador, Estonia, Eurasian Patent Organization, European Patent Organization (EPO), Finland, France (only thru EPO), Gabon (only thru OAPI), Gambia, Georgia, Greece (only thru EPO), Hungary, Iceland, India, Indonesia, Ireland (only thru EPO), Italy (only thru EPO), Kazakhstan, Korea (South), Kyrgyzstan, Latvia (only thru EPO), Lesotho, Liberia, Liechtenstein (only thru Switzerland), Lithuania, Macedonia, Malta (only thru EPO), Moldova, Monaco (only thru EPO), Mongolia, Morocco, Mozambique, Namibia, Netherlands (only thru EPO), New Zealand, Norway, Papua New Guinea, Russian Federation, San Marino, Seychelles, Sierra Leone, Slovakia, Slovenia (only thru EPO), South Africa, Swaziland (only thru ARIPO), Sweden, Syrian Arab Republic, Tajikistan, Tanzania, Trinidad and Tobago, Turkmenistan, Uganda, Ukraine, United Kingdom, United Republic of Tanzania, Uzbekistan, Viet Nam, and Zimbabwe.
  • Only thru OAPI means that you can only file a PCT National Stage application in this country by filing a Regional Patent application before the African Intellectual Property Organization (OAPI).
  • Only thru ARIPO means that you can only file a PCT National Stage application in this country by filing a Regional Patent application before the African Regional Intellectual Property Organization (ARIPO).
  • Only thru EPO means that you can only file a PCT National Stage application in this country by filing a Regional Patent application before the European Patent Office (EPO).

Once you have entered the national phase, the national patent Offices will begin the process of determining whether your application is patentable or not under the local laws and regulations. The length of this process depends on the local patent office, and it usually ranges between 2-5 years.

The costs for filing a National Stage application depend on the number of pages, claims, words of the description and country of interest. You can use our online tool to determine the exact cost in advance. Just have your application serial number at hand and click here.

Among the numerous advantages of using the PCT procedure, we can summarize the most important ones as:

  1. you have more time (up to 18 months) to extend your patent rights to foreign countries.
  2. the international search report and written opinion will provide you with important information about the patentability of your invention. You can use this information to determine if it is really worthy to extend your patent rights abroad.
  3. The optional international preliminary examination will allow you to amend the international application, argue your case and put the application in order before entering the national stage applications.
  4. since the national patent offices will receive the search and examination reports on your invention, in most cases the examination process of patent offices in the national phase can be considerably reduced.
  5. It reduces the cost and time of the whole patenting process.

If you have just realized the term for extending your patent rights abroad has passed, don’t panic. There is still hope. As explained above, the time limits imposed by WIPO are very clear and rigid, but there are some countries that offer some extra time (called grace period) that you can use to file your application after the 30/31-month period.

  • Canada: The original deadline for filing a PCT National Stage application in Canada is 30 months from the filing of the first application for your invention. However, there is a 12-month grace period available you can use to file in Canada. The Canadian Intellectual Property Office (CIPO) allows late national phase entry at 12 months from the original deadline by paying a $200 late fee. That late entry is automatic (it is not important to the Canadian Intellectual Property Office why the application is being filed late) and the late fee is paid at the time of late national phase entry.
  • China: The original deadline for filing a PCT National Stage application in China is 30 months from the priority date. A two -(2) month grace period is available in China which allows the Chinese national stage to be entered up to thirty two (32) months after the priority date. To take advantage of this grace period you have to pay an additional fee of around $ 180.
  • European Patent Office: The deadline for filing a national stage application before the European Patent Office (EPO) is 31 months. However, there is a grace period available with which you will have up to 40 months from the priority date for filing in Europe. After the original deadline has passed, the EPO will issue a ‘Notification of Loss of Rights’, after which you have 2 months to file the application. As in the previous cases, you have to pay an extra fee to take advantage of this extra time.
  • Japan: The original deadline for filing a PCT National Stage application in Japan is 30 months from the priority date. Even though there are no formal graced periods available, the Japanese Patent Office allows an additional two (2) months from filing the national stage application in which to supply the necessary translation.
  • United States: The original deadline for filing a PCT National Stage application in the US is 30 months from the priority date. If the original deadline has passed, you application will be considered abandoned by the United States Patent and Trademark Office (USPTO). You can file a petition for revival of an International application for patent designating the US abandoned unintentionally within two months of the decision refusing to revive or within such time as set in the decision.