What is a PCT International Patent Application and Should I File One? Episode 33

Introduction to PCT Applications

I’ve mentioned PCT applications a few times in this podcast series but haven’t gone into detail about what they are. The next several episodes will focus on foreign applications, and PCT applications are one way to file foreign patents.

If you have no interest in patent protection outside of the United States, you can skip these episodes.

After I cover a few foreign patent episodes, I’ll return to U.S. applications before addressing additional foreign patent issues later. The reason I’m structuring the podcast this way is that I’m following the typical timeline inventors go through when filing a patent.

Why Discuss PCT Applications Now?

I previously mentioned the 12-month deadline after filing a U.S. application for filing foreign patents. There’s a good chance that you won’t have received any correspondence from the U.S. Patent and Trademark Office before needing to decide whether to file foreign applications.

That’s why I’m covering foreign filing now—before we’ve gone through the entire U.S. patent prosecution process.

What Is a PCT Application?

A PCT application allows you to delay making big foreign patent financial decisions about your invention for an additional 18 months compared to filing foreign applications directly.

• If you don’t file a PCT application, you must decide on foreign patents within 12 months of your U.S. application.

• If you do file a PCT application, you extend that decision to 30 months—giving you an extra 18 months to determine whether foreign patent protection is worth the cost.

This is the big picture: Filing a PCT application delays major costs and commitments.

No Such Thing as an “International Patent”

The PCT stands for Patent Cooperation Treaty, which allows a single application to be used for patent filings in most countries worldwide.

However, there is no such thing as an “international patent.”

This might seem counterintuitive—why have an international patent application but not an international patent? The reason is that a PCT application is a single application that can turn into multiple national patents, but each country (with some exceptions) still requires its own separate patent.

How Does a PCT Application Work?

The Patent Cooperation Treaty (PCT) was established so that participating countries can review a single application before deciding whether an invention is patentable.

Without the PCT, if you wanted patent protection in 30 countries, you would have to file 30 separate applications, which would be extremely expensive. Instead, the PCT allows you to file just one application in a receiving office, such as the U.S. Patent Office, which is a PCT receiving office.

Filing a PCT application is like filing an application in all PCT-member countries at once.

Countries That Are (and Aren’t) Part of the PCT

As of June 2018, 152 countries are part of the PCT. However, not every country is included.

Most missing countries are small nations where businesses don’t usually seek patent protection, but two major exceptions are:

• Taiwan

• Argentina

If you need patent protection in these countries, talk to an attorney about how to apply.

Hong Kong is technically not part of the PCT, but you can obtain patent protection there through China or the United Kingdom, so you don’t have to worry about Hong Kong immediately.

How to File a PCT Application

If you’ve already filed a U.S. application, you must file your PCT application within 12 months of your U.S. application date.

You could also file a PCT application first, before filing a U.S. application. That’s a different strategy I’ll cover in a future episode, but for now, I’ll assume you’ve already filed a U.S. application.

Why File a PCT Application?

Let’s say you’ve just launched a product and filed a U.S. patent application, but you’re unsure whether your product will be successful or in which countries you’ll sell it.

Without a PCT application, within 12 months of your U.S. application, you would need to:

• Pick the foreign countries where you want patents.

• Find patent attorneys in each country.

• Translate your patent application into different languages.

• Pay filing fees in each country.

• Pay foreign attorneys.

This could cost hundreds of thousands of dollars before you even know if your invention is patentable or commercially viable.

Instead, by filing a PCT application, you delay the big financial commitment by an extra 18 months, reducing risk.

Cost of a PCT Application

The filing fees for a PCT application are higher than U.S. patent filing fees. Depending on:

• Application size

• Company size

Filing fees could range from $2,000 to $4,000, not including attorney fees.

If you’ve already filed a U.S. application, your attorney won’t need to rewrite everything, but PCT applications still require work, so overall costs might be between $5,000 and $12,000.

What Happens After Filing a PCT Application?

Once your PCT application is on file, you now have 30 months (from your earliest filed application) to enter the national stage in the countries where you want protection.

This means:

• You don’t have to pay foreign filing fees immediately.

• You buy 18 extra months to decide which countries you want a patent in.

Who Should File a PCT Application?

You Should File a PCT Application If:

• You’re interested in patent protection in four or more countries.

• You’re unsure about which foreign markets to enter.

• You want more time to assess your invention’s viability before committing major funds.

You Should NOT File a PCT Application If:

• You only need patents in one or two additional countries.

• You’re absolutely certain which countries you need protection in.

For just one or two countries, it might be better to file directly in those countries and avoid the extra PCT filing costs.

I’m Adam Diament, and until next time, keep on inventing!