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Patent Cooperation Treaty For Worldwide Filing of Patent Applications

Hart IP Law can work with you to navigate through the complexities of the Patent Cooperation Treaty (PCT) system to achieve your patenting objectives.

The PCT is administered by the World Intellectual Property Organization (WIPO) and has more than 140 member countries. The PCT process simplifies the filing of patent applications on the same invention in member countries, but does not eliminate the need of applicants to file additional documents and fees in countries where actual patent protection is desired. This is because the PCT system is a patent filing system and not a patent granting system.

PCT international application procedures include:

  1. Filing an international application with a competent Receiving Office (RO) and International Search Authority (ISA).
  2. Receiving an international search and Written Opinion (WO) from the ISA identifying any prior art that may be material to patentability of the invention, and providing a reasoned statement regarding novelty, inventive step and industrial applicability of the claims.  
  3. An opportunity to file informal comments re: the WO/ISA and make Article 19 Amendments.
  4. International Publication after 18 months from the earliest filing date.
  5. An opportunity to file a Chapter II Demand to carry out full prosecution and file Article 34 Amendments with an International Preliminary Examining Authority (IPEA) -- one of the world's major patent Offices.
  6. Enter, if Applicant wishes to proceed, the national/regional stage of the PCT process to pursue patent grants in one or more PCT member countries. The decision on granting patents is made exclusively by national or regional offices in the national/regional phase.

The following PCT timeline indicate important dates and deadlines for the PCT processes.

  PCT Timeline

**  If a favorable WO/ISA is received indicating one or more claims are allowable, one strategy for a quick patent decision is to file a national/regional phase application at that point, e.g., using the recent PCT Patent Prosecution Highway (PCT/PPH) program.  Using the PCT/PPH, some have received USPO allowances in as fast as 2 to 15 days after filing with the USPO to make the application special.  There are pros and cons to using the PCT/PPH.  Hart IP can counsel you to determine if the PCT/PPH or other accelerated examination processes are right for you.  

*** It is very important to appreciate that an applicant can file national phase before the end of the thirty month window. If a country's national entry deadline passes (30 or 31 months - based on the country) without a national application having been entered, the application will be deemed abandoned in that country (countries).