UL Lafayette: Intellectual Property: Patent Cooperation Treaty (PCT)

UL Lafayette: Intellectual Property: Patent Cooperation Treaty (PCT): "

Patent Cooperation Treaty (PCT)
PATENT LAW YOU CAN USE™ By Howard M. Eisenberg © 2006
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Abstract - The Patent Cooperation Treaty (PCT) is an efficient and cost-effective way to enter into the patenting process in many different countries at one time. Although the PCT process does not result directly in the issuance of any national patents, it provides several important benefits for applicants contemplating foreign filing. Almost all countries, with the notable exception of Saudi Arabia and perhaps a few others, are signatories to the Paris Convention for the Protection of Intellectual Property. By this international treaty, an applicant for a patent in any of the signatory countries such as the USA may file a patent application in any of the other signatory countries and claim the benefit of the filing date in the first county if the second application was filed within one year of the original filing date. Filing patent applications directly in foreign countries according to this system works quite well if foreign patent protection is desired in only one or two countries. But, what if patent coverage is desired in a great many countries? Filing patent applications in foreign countries is very expensive because of separate filing fees and translation costs. Also, because there is only a one-year time for foreign filing following the filing of the original application in the USA, it is unlikely that prosecution of the application will have proceeded to the point that a good assessment of the patentability of the invention can be made. Additionally, at this time, the commercial value of the invention might not yet be established. It does not make good sense to spend such large sums of money to file multiple expensive foreign patent applications that might later prove to be without much value. For these reasons, the Patent Cooperation Treaty or PCT system, was established. The PCT permits the filing of an international patent application either immediately or within one year of the filing of a patent application in any of the member nations. The PCT fee is quite reasonable, usually about $2000 to $3000 and the PCT process provides a delay in the deadline for the expensive filing in foreign countries for up to a year and a half beyond the time in which foreign patent filing would have to take place without the PCT system. Therefore, rather than having to file a patent application in foreign countries within one year after filing the U.S. application, under the PCT system the foreign patent applications do not have to be filed until 30 months following the initial U.S. filing date, otherwise known as the “priority date.” This delay of 18 additional months before the deadline for entry into the national stage of the foreign patent application process that is provided by filing a PCT application is an extremely important matter. PCT filing provides time to see how the prosecution of the original U.S. application is going, to establish licensing or other funding arrangements with other parties, or to determine whether or not the invention is commercially valuable. If the invention turns out to be unpatentable, if funding does not materialize, or if the invention is not valuable, then the PCT application can be allowed to become abandoned, and the expensive costs associated with the national phase of application will have been avoided. On the other hand, if U.S. patent prosecution goes well, funding for foreign patenting becomes available, and the invention is determined to be valuable, then the PCT application can be entered into whatever countries patent coverage is desired in. So, how does the PCT process work? In recent years, the PCT process has been simplified significantly. Previously, the PCT process ended at 20 months following the priority date unless the applicant filed what is referred to as a Chapter II Demand. Now, it is no longer necessary to file the Chapter II Demand in order to extend the PCT process until 30 months after the priority date. As explained below, the filing of a Chapter II Demand may have certain advantages in limited circumstances but, for the most part, now has only limited usefulness. The first phase of PCT prosecution, including the filing of a new PCT application, is referred to as Chapter I. The PCT application may be the initial patent filing or a PCT application may be filed at any time during the one-year priority period following the filing of the original patent application filing date. In this latter instance, the PCT application requests the priority date of the original application. Just as with a U.S. application, the PCT patent application must contain a description of the invention, at least one claim, drawings if needed, and an abstract. Typically, the U.S. application that already has these features is filed in the PCT. The application is usually filed in the PCT branch of the U.S. Patent Office, which is referred to as the Receiving Office. As of August 2006, there are about 133 countries that are members of the PCT. A list of member can be found at the WIPO (World Intellectual Property Office) website at http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf. This list should not be considered to be complete because new countries are frequently added to the list of member countries. Recent changes in PCT rules stipulate that, unless an applicant expressly excludes one or more particular countries, the PCT filing is designated as being effective for each of the member countries. When filing a PCT application with the U.S. as the Receiving Office, it is not necessary to include a certified copy of the priority document, the previously filed U.S. application. In this case, a box in the application is checked to request the PTO to prepare and submit a certified copy of the original application to the International Bureau. The Receiving Office will verify that the application is in proper form and that all proper fees have been paid. Following this, the International Searching Authority conducts a patentability search. If the application was previously filed in the US Patent Office, the examiner who conducts the search for the PCT will often be the same examiner who is handling the application in the U.S. filing. The search report is issued by the PCT about 16 months after the priority date of the application. This date may be anywhere from 4 to 16 months after the PCT filing, depending on whether the PCT filing is the original application and when the PCT application was filed in relation to the filing date of the original application. The applicant has an opportunity to amend the claims at this point, although it is not required. Any amendments to the claims will be transmitted with the application as it is sent to the designated countries and the published PCT application will contain the claims as amended. At eighteen months after the priority date, the PCT publishes the application. Published PCT applications may be retrieved on the WIPO website database search page at http://www.wipo.int/pctdb/en/. If the Applicant wishes the PCT Office to conduct an additional patentability examination, referred to as the International Preliminary Examination, the Applicant must file a Chapter II Demand before the expiration of 22 months after the priority date. This 22-month date is typically about 10 months following the entry into the PCT system based on a U.S. application filed one year before the filing date of the PCT application. Generally, the Chapter II Demand is not necessary unless the application has been significantly amended following the initial patentability search by the International Searching Authority during the Chapter I process. Therefore, unless the application has been amended, the Chapter II Demand is usually not made. Whether or not a Chapter II Demand has been made, the total delay in the PCT system before having to file applications in the individual countries is 30 months from the priority date, which corresponds to 18 months after the one year deadline for foreign filing following an initial U.S. application. In this 30 month period, it is likely that the U.S. application will have been concluded or at least that the applicant will have a good idea whether or not valuable patent claims may be obtained. Also, the PCT process provides a period of up to two and a half years to obtain financial backing for foreign filing and to determine commercial viability of the invention. At the end of the 30 month period (or 31 month period for some countries), the PCTs role in the patent application is terminated. If the applicant decides that it is not worthwhile to expend additional money in order to prosecute the application in foreign countries, the applicant may allow the application to become abandoned. This is accomplished simply by not taking any action to enter the national stage in any of the designated countries. To continue foreign patent protection in any of the countries designated on the initial PCT request, the applicant enters the application at this time into whichever countries patent protection is desired. It is only then that the very expensive foreign national stage of patent application begins. The above is a brief summary of the PCT process. There are also a few other things that you should be aware of regarding the PCT process. The United States is included in the list of PCT designated countries, which provides some distinct advantages. For one thing, the inclusion of the U.S. in the PCT application can have the equivalent effect of filing a continuation application from the original US patent application. Thus, provided that the PCT application is still pending, the PCT application can be used to provide the basis for filing further continuation applications in the U.S. Patent Office even if the prosecution of the original patent application has terminated. Finally, be aware that there are many countries that are not members of the PCT. If patent protection is desired in any of these countries, a direct national patent application must be filed in each country. Countries that are not members of the PCT include most of the countries of South and Central America including Peru, Argentina, Venezuela, and Chile; most Middle Eastern countries including Saudi Arabia, Iran, Iraq, Jordan, Pakistan, and Kuwait; some Southeast Asian countries like Thailand, Taiwan, Bangladesh, and Malaysia; and several African countries like Angola and Rwanda. Although the PCT system involves additional expenses that would not be required if applications are filed directly into national patent offices, the PCT is a valuable system because it delays these very expensive filings and may make it possible to avoid these expenses altogether if the foreign filings should be determined to be unnecessary. Therefore, in virtually all instances where foreign patent filing is contemplated, it is recommended to first file the foreign applications through the PCT system.
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Reprinted by permission from the author. Howard M. Eisenberg is a biotechnology and life sciences patent attorney who represents a number of university clients. His particular area of concentration is in patents involving human or veterinary medicine.

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