As mentioned in a previous article, one of the most common reasons inventors choose to pursue foreign patent protection via the PCT is due to the opportunity to delay making the choice of which specific countries or regions in which to pursue patent protection. The opportunity to delay this decision may be favorable for several reasons.
In some cases, inventors may want to ensure patent protection in the country where their manufacturing will be located, but they may not be certain yet where that will occur. Further, uncertainty surrounding the budget for IP protection may prevent inventors from making a firm determination as to which, and how many, countries/regions are needed for patent protection. The bottom line is that the PCT process grants inventors time to make such decisions.
The PCT Process Timeline
To illustrate the typical timeline of filing a PCT application and moving toward national stage filings in individual countries/regional offices, we will discuss a non-provisional patent application (the “Parent Patent Application” shown on the timelines below) first filed in the U.S. on January 1, 2020 (thus giving the Parent Patent Application a priority date of January 1, 2020). Please note that the numbers in the arrow represent months from the priority date.
The deadline to file a PCT application is twelve months after the priority date of the original application. Using our example of a non-provisional first filing, the PCT deadline is January 1, 2021. However, it's important to note that if the Parent Patent Application claims priority to, for example, a provisional application, the PCT filing deadline is twelve months from the provisional application filing date. So, if the provisional application was filed on January 1, 2019, both the non-provisional application (“Parent Patent Application”) and the PCT application would have to be filed by January 1, 2020.
PCT applications must be filed with a PCT receiving office. Several national/regional patent offices (for example, the USPTO) are considered PCT receiving offices and accept PCT applications and their associated fees.
The next steps in the PCT process are the International Search and International Publication. Both steps will be discussed in greater detail in a later article. In short, an International Searching Authority (“ISA”) conducts a preliminary examination of each PCT application and identifies relevant prior art references (in the “International Search Report”).
Based on the content of the identified prior art, the ISA issues a written opinion regarding the likelihood of patentability of the PCT application. The written opinion is released with the results of the search, so the “International Search” step may be referred to as the “International Search Report and Written Opinion” step. This step occurs 16 months after the priority date, and publication of the PCT application happens 18 months after the priority date.
The period from filing the PCT application through the International Search and Publication is commonly called the “International Phase.” The “National Phase” begins 30 months after the application priority date, when the PCT application is passed to each designated country/regional office. Applicants may choose to designate as many countries/regional offices as they wish, though costs quickly accumulate with each designated office.
Upon entry of the National Phase, the PCT application undergoes the typical examination process within each country/regional office. It's important to note that each country/regional office conducts an independent examination and the results within one office have no bearing on the results in a different office. For example, your application may be successful (i.e., result in an issued patent) in one office but might be unsuccessful in another office. In addition, the International Search Report and Written Opinion may factor into the examination process in the National Phase, though a favorable written opinion from the ISA does not guarantee successful examination in each independent office.
It should also be noted that there are two additional optional steps between International Publication and entry into the National Phase: Supplementary International Search and International Preliminary Examination. These optional steps will be discussed in greater detail in a future article.
How Gallium Law Can Help
The IP professionals at Gallium Law have significant experience with obtaining foreign patent protection, both through the PCT and through direct foreign application filings. Whether you have a global IP protection strategy in mind or you're just starting to consider pursuing foreign IP protection, we're ready to help you develop and implement strategies to maximize your IP. Please fill out this Contact Form or call us at 651-256-9480 to set up a meeting.
*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.