IP ESSENTIALS A Toolkit for Entrepreneurs, Innovators, and Business Owners
PATENT COOPERATION TREATY (PCT)
The PCT is a mechanism that can be used to delay the process of filing patent applications in any of the more than 150 designated PCT member states. The filing date of a PCT application is used as the initial application, or priority date, for subsequent patent applications within any of the applicants’ individually selected member states. Q Does filing a PCT application result in an international patent being granted? A No. A PCT application provides a placeholder filing date, used as the priority filing date, in the various member states. Further action will be needed by the applicant in the individual member states in which the applicant wants patent protection. Q What countries are included in the PCT? A A full listing of the member countries can be found on the World Intellectual Property Organization website .
Adopted in 1883 the Paris Convention for the Protection of Industrial Property was the first in- ternational agreement to align intellectual prop- erty protection across its member jurisdictions. The Patent Cooperation Treaty (PCT) is an international treaty established by various members of the Paris Convention. PATENT COOPERATION TREATY (PCT)
“A PCT applica- tion must be filed within twelve months from the filing date of a pri- ority application.”
Q Are there any limitations as to when can I file a PCT application? A A PCT application must be filed within twelve months from the filing date of a priority application.
Q Who can file a PCT application? A The applicant must meet nationality or residency requirements of one of the PCT member states. Q Where can I file the PCT application? A The Receiving Office (RO) for the PCT application is determined by the nationality and/or residency of the applicant.
Q How much does it cost to file a PCT? A The cost of the PCT is variable depending on the size of the application and the chosen searching authority. Q Can I expect any further costs after filing the PCT? A Yes. There likely will be additional costs as your application advances throughout the PCT process such as governmental or agency fees. Q What is an International Searching Authority (ISA) and can I choose which one to use? A The ISA is a national patent office chosen by the applicant to perform the search on the invention. There may be benefits to filing in one ISA over another such as cost and how subject matter is handled in different jurisdictions.
Q What is the purpose of the International Search Report (ISR) and Written Opinion (WO)? A The ISR and WO can give you valuable insight into how your application may be treated in individual countries or regions. Any action in response to the ISR and WO is optional. Q What options does an applicant have for responding to an ISR and WO? A There are three options: 1. Submit claim amendments or comments in response to the ISR and WO. 2. Demand Chapter II Examination of the international application (Demand). 3. Take no action and defer amendments (if needed) until the national phase.
IP ESSENTIALS: PATENT COOPERATION TREATY (PCT)
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