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The PCT Process — flexible, cost-effective and efficient

published in McAfee & Taft tIPSheet Alert | May 8, 2015

By Bill Hall

Initiated in 1970, the Patent Cooperation Treaty (PCT) has become a popular tool for patent applicants interested in obtaining patents in multiple countries. In 2014, 61,492 PCT applications were filed by U.S. applicants. As of March 1, 2015, 148 countries have submitted the necessary papers to participate in the PCT process as administered by the World Intellectual Property Organization (WIPO). A full list of PCT countries can be found here.

Although the name implies the possibility of an international patent, the PCT process is an examination process, not a patent granting process. For those patent applicants interested in patent coverage in multiple countries, the PCT process provides a cost-effective initial assessment of their patent applications. Patent attorneys familiar with the PCT process can develop strategies for their clients that will allow clients to defer costs while developing a business plan for their inventions (cost deferment strategy) or reduce the time between application and grant of a patent (fast track strategy).

All PCT applications begin with an initial filing of the PCT application in a Receiving Office. For most U.S. applicants, the U.S. Patent and Trademark Office will act as the Receiving Office. Depending on the nature of the invention claimed in the application, a U.S. applicant will have the option to select the USPTO, European Patent Office, South Korean Patent Office, Australian Patent Office, Russian Federation Patent Office or Israel Patent Office as the International Searching Authority (ISA) and/or the International Preliminary Examining Authority (IPEA). Once the application has been received and accepted by the Receiving Office as satisfying all PCT filing requirements, the International Searching Authority will search for relevant prior art and issue a Written Opinion.

Following receipt of the Written Opinion, the applicant has a few options. If the applicant is pursuing a cost deferment strategy (i.e., the applicant wishes to defer costs as much as possible), the applicant may elect to do nothing. Thus, the applicant will simply wait until the 30-month deadline for filing patent applications in the desired countries. Under this strategy, the applicant has incurred the initial PCT filing fee but delayed all additional costs for two and a half years while preserving the right to file the application in 148 countries. The applicant can use the 30 months to market the invention and determine if the potential market justifies the costs of the subsequent patent applications.

If the applicant is pursuing a fast track strategy, the receipt of the Written Opinion initiates the PCT prosecution process. In fast track, the most common approach will be to assess the Written Opinion and prepare what is known as an Article 34 response and/or amendment. The Article 34 response provides the applicant with a one-time opportunity to amend the application and submit arguments over any rejections/objections in the Written Opinion. Filing of the Article 34 response with a request to immediately enter Chapter II of the PCT initiates the second phase of PCT process.

Upon receipt of the Article 34 response, the International Preliminary Examining Authority will continue the examination of the application and will ultimately issue a final opinion known as the International Preliminary Report on Patentability (IPRP). (If the applicant does not respond to the Written Opinion, the Written Opinion becomes IPRP.) Typically, if the applicant responds promptly to the Written Opinion and requests immediate entry into Chapter II of the PCT, the international preliminary report on patentability will issue several months earlier than the 28-month deadline required by the PCT guidelines. If the IPRP is favorable, then the applicant may be able to take advantage of the Patent Prosecution Highway (PPH) to further fast track the application through the national phase in the selected countries. Countries with PPH programs accepting favorable findings from the PCT include: the European Patent Office, Canada, Japan, Russia and others. For a complete list, click here. Thus, obtaining a favorable IPRP may reduce prosecution costs at the national phase or the application process and may lead to a faster allowance of a patent.

Thanks to the flexibility of the PCT process, one can easily switch strategies midway through the PCT process. Perhaps an applicant following the cost deferment strategy has reviewed the Written Opinion and believes a response must be filed. As long as the Article 34 response can be filed within 22 months of the PCT priority date, then the applicant has the right to file the Article 34 response. Time permitting, the applicant can always switch gears midway through the PCT process if the initial strategy no longer fit the applicant’s business goals.

The PCT Process

PCT systemClick image for high resolution

This update has been provided for clients and friends of McAfee & Taft A Professional Corporation. It does not provide legal advice, and is not intended to create a lawyer-client relationship. Readers should not act upon information in this update without seeking professional counsel.