Alphabet Soup: PCT (Patent Cooperation Treaty) and Other Letters
The PCT application may be filed in the USPTO as an RO although the IB of the WIPO administers the PCT.
Have you got that?
The Patent Cooperation Treaty has added a new lexicon to the already arcane language of patents. Here’s an explanation in English. The PCT (Patent Cooperation Treaty) is an international agreement to which the United States became a full party in 1987. A number of enhancements have been added to the PCT this year. The PCT provides for the filing of patent applications on the same invention in a number of countries. A U.S. applicant may file a single patent application in a standardized format in English in the Receiving Office (RO), one of which is the U.S. Patent and Trademark Office (USPTO). The application will be acknowledged as a regular individual country or national filing in all member countries of the PCT.
The PCT offers an alternative route to filing patent applications directly in those countries which are members of the PCT. Currently, over 120 countries are members of the PCT. The PCT provides filing and searching procedures whereby much of the processing and transmittal of documents is done by the USPTO which acts as an international authority. The International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland administers the PCT.
The PCT permits delaying of the actual filing of a national application in a particular chosen country for as long as thirty (30) months from the initial filing date. The PCT filing procedure may, however, be more expensive than filing of individual national applications over the long haul. The main benefit of the PCT filing is postponing the bulk of the fees to a later date. This may be advantageous to obtain protection while allowing time to test the market and/or obtain licensees for the invention.
To better understand the PCT, a typical procedure can be followed. In many instances, a U.S. patent application will initially be filed. An international PCT application for the same invention will then be filed subsequently within the one year priority period. If the application is filed within one year from the date of the U.S. application, it will be given a filing date from the originally filed U.S. application pursuant to the Paris Convention Treaty.
The international PCT application will be filed in the USPTO as a receiving office (RO). The Receiving Office will then prepare three copies of the application: one copy, the Search Copy (SC), to the International Searching Authority (ISA); another copy, the Record Copy (RC), to the International Bureau; and a final copy, the Home Copy (HC), remains in the Receiving Office.
The USPTO may act as an ISA (International Searching Authority) for a U.S. applicant. An International Search Report (SR) plus a written opinion will be issued by the ISA. An international preliminary report on patentability (IPRP) is issued for every international application. A copy is sent to the Applicant and to the International Bureau. No judgment as to patentability is made at that time.
Once this has been completed, the focus shifts to the International Bureau (IB), the functions of which are performed by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The IB (International Bureau) will publish the international application along with the Search Report at the expiration of 18 months from the priority date (initial U.S. filing). A copy of the application is also transmitted to each of the countries which were originally designated.
The Applicant will then have 30 months from the original priority date to move for consideration in the patent offices for each country in which he or she desires consideration.
In summary, the PCT provides an alternative to initiate international patent protection in certain cases.
