Obtaining Foreign Patents through PCT Application
If you're considering protecting your invention internationally, a Patent Cooperation Treaty (PCT) application can be your starting point. It allows you to achieve international patent-pending status with a single patent filing. However, it's important to note that the PCT application alone does not automatically grant you foreign patent rights. It serves as a stepping stone towards that goal, requiring you to file individual patent applications in your desired countries at a later stage known as the national phase. Nevertheless, a PCT application offers a streamlined approach to preserving your option for foreign patent rights while managing costs effectively.
The Patent Cooperation Treaty is a globally recognized system that facilitates the initiation of worldwide patents. Through the PCT, you can file one international patent application with a qualified Receiving Office (such as the USPTO, KIPO) and designate multiple PCT member countries for potential coverage. By opting for a PCT application, you gain additional time and flexibility, as it postpones the deadline for individual national filings and enables you to keep your foreign filing options open.
If you need assistance with filing an international PCT patent application, feel free to reach out to us at daeilpat@gmail.com.
PCT Application Process: From Filing to Patent Issuance
Will a PCT application directly result in an issued patent? No, a PCT application does not directly result in an issued patent. Its primary purpose is to provide a temporary placeholder and buy additional time before entering the national stage of each desired member country.
Filing a PCT application initiates the foreign filing process, but it does not guarantee the acquisition of foreign patents. It simply grants you international patent-pending status. It's crucial not to assume that filing a PCT application automatically secures foreign patents. Instead, think of a PCT application as a provisional application for global protection, wherein subsequent filings are required to obtain granted patents.
To illustrate, let's consider a scenario where you commence the patent process by filing a single patent application in your own country. Remember, it's important to file this application before making any public disclosures to safeguard your ability to seek foreign patent protection. Here's a useful patent timeline:
The initial filing in your country triggers a 1-year deadline for filing foreign applications to claim the priority date (i.e., the original filing date) of your initial application. Without the PCT, you would have to submit multiple applications (one for each desired country) at this one-year anniversary to establish the priority claim. This could entail a significant financial investment at an early stage of the concept.
Demystifying PCT Delay
The PCT delay mechanism operates as follows:
When you file a single PCT application, you have the option to designate any or all of the member PCT countries, effectively extending the deadline for entering the national phase. Typically, this deadline is set at 30 months from the priority date, although certain PCT countries may have a 31-month national phase deadline. By making a single filing that incurs a cost of a few thousand dollars, you essentially purchase an option that adds an extra 18 months to the deadline for foreign filings (shifting from 12 months to 30 months).
PCT National Phase Timeline:
The additional 18-19 months can be highly valuable, allowing you to secure funding or explore ways to monetize your invention. It also provides you with the opportunity to assess whether your invention warrants protection in numerous foreign countries. In such cases, you would have only spent a few thousand dollars to gain this extended time frame, enabling you to make an informed decision.
Entering the National Stage of PCT Countries
When the national stage deadline arrives, which is usually set at around 30 to 31 months from the priority date, you are required to submit a national stage application for each desired foreign country. This stage of the process often involves a considerable financial investment, especially if translations are required for the initial filings, which can add to the overall cost.
National Stage Deadline in PCT Process
The national stage deadline varies depending on the PCT member country. Some countries have a 30-month deadline, while others have a 31-month deadline. It is important to be aware of these different time limits. Our firm takes a cautious approach and considers the earlier 30-month date as the national stage deadline.
Certain notable foreign IP offices, such as Australia, the European Patent Office (EPO), India, and South Korea, among others, have a 31-month deadline for entering the national stage. It's crucial to be mindful of these variations and adhere to the specific deadlines of each country you are targeting.
Here’s a list of the national stage time limits.
What about non-member countries?
While the majority of developed countries are members of the PCT, it's important to consider non-member countries if you intend to pursue patent protection in those regions. Non-member countries have a foreign filing deadline set at 12 months from the priority date. Therefore, if you wish to secure patent rights in countries that are not part of the PCT, you must file individual applications within this 12-month timeframe to meet their specific requirements.
Is a PCT Patent Application Right for You? Considerations and Alternatives
While the Patent Cooperation Treaty (PCT) can be advantageous, it may not be suitable for everyone. There are scenarios where filing a PCT patent application might not be the best choice. For instance, as the 12-month deadline approaches from your initial patent filing, you might realize that you only intend to seek patent protection in a few specific foreign countries. If you are confident that you do not need to keep the option open for filing in additional countries, you can opt to directly file applications in your desired countries by the one-year anniversary. Additionally, it is possible that the foreign countries you are interested in are not PCT members. To determine the best strategy for your situation, it is recommended to consult with a patent attorney who can guide you accordingly.
How much does a PCT application cost?
The cost of filing a PCT application can vary depending on several factors, including the complexity of the invention, the services provided by the patent attorney or agent, and any additional fees required by the selected Receiving Office. Generally, the cost of filing a PCT application can range from a few thousand dollars to several thousand dollars, which includes the filing fees, professional fees, and any associated administrative costs.
It's important to note that the cost of a PCT application is not a one-time expense. As the application progresses through the various stages, such as entering the national phase in different countries, additional costs will be incurred for filing individual patent applications, translations, and other necessary procedures.
To get a more accurate estimate of the cost for filing your specific PCT application, it is advisable to consult with a patent attorney or agent who can provide a detailed breakdown based on your unique circumstances and requirements.
Looking for foreign patent protection?
Our patent team of experienced patent attorneys specializes in PCT and foreign filings. With a strong network of IP firms across the United States, Europe, Asia, and Latin America, we are well-equipped to assist you in obtaining foreign patents. Feel free to reach out to us at daeilpat@gmail.com to see how we can help you get foreign patents.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- How to apply for an international patents: Direct filing vs PCT
- PCT Application: A Guide to Obtaining Foreign Patents
- Mastering the PCT National Phase: Everything You Should Know
- Advantages of filing a PCT international patent application in Korea, not in your home country
- Understanding Priority Claims for Foreign Patent Applications
