The Patent Cooperation Treaty (PCT) provides a sort of clearinghouse system to facilitate filing for patent protection for an invention in participating countries. The PCT system is administered by the World Intellectual Property Organization (WIPO), together with local patent offices. Patents are still largely granted and enforced on an individual country basis. But the PCT system helps simplify and harmonize the filing of counterpart applications in multiple countries. But there are various deadlines and phases that are unique to PCT applications. What follows is an explanation of the PCT timeline for new international patent applications.
In the timeline graphic above, applicant actions in the international phase are shown at the top and official actions are shown at the bottom. Items in dashed lines are optional, or are conditional upon optional action by the applicant. National phase entry, indicated at the right, requires applicant action in one or more individual countries or regions but is not shown in detail. There are other possible actions in PCT applications not specifically addressed here.
WIPO also provides a PCT time limit calculator that can be used to determine individual deadline dates for a given international application after initial filing.
The PCT system is not available for all types of patents in all participating countries. It is generally limited to utility (or invention) patents. Design patents (that is, for industrial/ornamental designs), plant patents (for certain asexually reproduced plants; plant-related inventions may still be eligible for a utility patent), and utility models (in certain foreign countries) cannot be pursued directly through PCT applications.
International and National Phases
The PCT timeline has two major phases. The first is called the international phase. This runs from the time the PCT application is filed with a receiving office (RO) until the deadline to enter the national (or regional) phase. Then the national (or regional) phase begins with the filing of one or more national phase entries (NPEs) in individual participating national and/or regional patent offices. The international phase ends when the national phase begins.
The PCT application is called an international application and is assigned an international application number. The national (and regional) phase applications are assigned a local application number. But the national phase is just a different phase of the same PCT application and does not involve a priority claim between different applications.
A PCT application can claim priority to one or more prior local (national or regional) patent application(s). Priority can be claimed to a prior application, including provisional applications, from any country that has joined the Paris Convention for the Protection of Industrial Property or is a member of the World Trade Organization (WTO). The deadline to file a PCT application is twelve (12) months from the earliest claimed priority date.
Of course, there is no need to file a local priority application. It is common to do so. But it is equally possible for a PCT application to be the first patent application filed, without any priority claim.
The PCT timeline graphic shown above uses month zero (0) as the earliest claimed priority date. This could be either the filing date of the earliest local priority application or the PCT international filing date if there is no priority claim. In either situation, many subsequent deadlines are calculated in relation to the earliest priority date.
Claim Amendments Under Article 19 (Optional)
An applicant can optionally file claim amendments under Article 19 of the PCT. The deadline for Article 19 claim amendments is either two (2) months from transmittal of the international search report (ISR) by the international search authority (ISA) or sixteen (16) months from the earliest priority date, whichever is later. However, late Article 19 claim amendments are still accepted if received by the International Bureau (IB) of WIPO before the technical preparations for international publication have been completed.
Article 19 amendments allow the applicant the option to amend the claims based on the results of the ISR for inclusion in the published PCT application. Article 19 also allows amendments to be made a single time during the international phase, as opposed to making separate amendments later on in individual countries/regions in the national phase. Applicants can still make amendments later on in the national phase, subject to local procedures.
Chapter II Demand and Article 34 Amendments and/or Arguments (Optional)
The designated international search authority (ISA) will issue an international search report (ISR) and written opinion (WO). These documents assess the patentability of the claims of the PCT application, but are not binding on individual patent offices during the national phase. The applicant can optionally make a Chapter II demand and submit Article 34 amendments and/or arguments in response. Amendments filed this way can be to the claims, description (Specification), and/or drawings, so long as they are supported by the original disclosure and do not add new matter. Chapter II demands require payment of a preliminary examination fee. The deadline to file the demand is three (3) months from transmittal of the ISR/WO or twenty-two (22) months from the earliest priority date, whichever is later. Late filed demands are ignored.
If a Chapter II demand is made, the international preliminary examining authority (IPEA) issues an international preliminary report on patentability (IPRP) under Chapter II. The IPEA is the same patent office previously-designated as the ISA. The IPRP under Chapter II takes into account all amendments and/or arguments submitted by the applicant. The point of making a Chapter II demand is generally to try to convince the IPEA to issue an IPRP that is more favorable than the prior WO with regard to patentability. (What is a little confusing here is that the IPRP is also referred to as an international preliminary examination report [IPER]; and if no Chapter II demand is made, the original WO of the ISA later becomes the IPRP under Chapter I automatically.)
Chapter II demands are entirely optional. Applicants can still make amendments and arguments later on in the national phase in the absence of a demand in the international phase. But making demand may be helpful in some situations. Whether it is worthwhile often depends on the applicant’s national phase filing strategy. For instance, some participating states extend the national phase entry deadline if a Chapter II demand is filed. Also, some national patent offices are more likely than others to defer to the results of international preliminary examination. At times, it also matters which patent office served as the IPEA in terms of how much weight and deference national phase offices will give to its conclusions.
Supplementary International Search Request (Optional)
Applicants have the option to request an additional search by a different search authority. This is called a supplementary international search (SIS). These require payment of additional fees and are not common. The deadline for a SIS request is twenty-two (22) months from the earliest priority date. When requested, these result in a SIS report (SISR).
National Phase Entry
After filing a PCT international application, the only further applicant action typically affirmatively required is to enter the national (or regional) phase. This is when the applicant commits to the individual countries and/or regions in which enforceable patent protection will be pursued. If no national or regional phase entry is filed, the international application is abandoned in all designated states.
The deadline for national phase entry varies by country, from 20-34 months from the earliest priority date. Most countries—including the U.S., Canada, Mexico, Japan, and P.R. China—have a thirty-month (30-month) national phase entry deadline. A significant number of countries and regional patent offices—including the regional European Patent Organization (EPO), South Korea, and Australia—have a thirty-one-month (31-month) national phase entry deadline. Some countries also extend the NPE deadline if a Chapter II demand is made. The shortest NPE deadlines are 20 months for Luxembourg (without a Chapter II demand; though a longer period is available via the EPO with later validation in LU) and 21 months for Tanzania (without a Chapter II demand). It is important to verify deadlines for the particular countries/regions of interest.
Early national phase entry is possible. It is not necessary to wait until close to the deadline to enter the national phase. Late national phase entry is sometimes possible, if local requirements are met (such as being unintentional, for delayed entry into the USA).
National phase entries are generally limited to utility (invention) patents. Although design, plant, and utility model patents are available in some countries, they must be pursued separately from a PCT international application. For instance, a U.S. design or plant patent application can potentially claim priority to a pending international application, though that is not common.
An important benefit of the PCT system is that the national phase entry deadline occurs relatively late. The applicant gains up to about eighteen additional months (about thirty months total) to decide which countries/regions will be pursued compared to the usual twelve-month foreign priority period (under the Paris Convention). And the international preliminary examination provides some assessment of patentability. The additional time and information available at the NPE deadline can allow more informed decisions about where further patent filing fees are worthwhile.
PCT “Bypass” Applications (Optional)
In the U.S., it is possible to file a so-called PCT “bypass” application in addition to or instead of a regular national phase entry (NPE). A bypass application is filed like a continuing application (continuation, divisional, or continuation-in-part) that claims priority to a pending PCT international application that designates the USA. However, bypass applications are rather unique to the U.S. and other countries may not permit these sorts of filings. Bypass applications must be filed while the PCT international application is still pending. This makes the bypass filing deadline thirty-month (30-months) from the earliest priority date—the same as the U.S. NPE deadline.
Bypass applications are occasionally useful because there are procedural differences in how PCT national phase entries and regular (non-PCT NPE) U.S. applications are handled and examined. For instance, Track One prioritized examination is not available for PCT national phase entries. A bypass application also avoids the need to file all signed invention oaths/declarations before a request for continued examination (RCE). Also, filing a bypass divisional application in parallel with a regular NPE and splitting up the original PCT claims between them may cost less in official fees than filing only the NPE and paying extra claim fees.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.