A Patent Cooperation Treaty (“PCT”) Patent Application is a framework for filing a patent application into multiple foreign countries (referred to as “states”). It offers many advantages to the applicant that would not be available if individual applications were filed in each country.
- A predictable time-frame is provided so that it is known when a search report will issue, when it will be examined and when it will enter into the National Stage, as discussed below. Attached is a PCT Timeline A, which shows the timing of different events that occur when a PCT application is filed based on a previously filed priority application.
- It allows additional time to evaluate possible markets in different countries. The deadline for electing designated states is 30 months after the priority date (i.e. 30 months after the earliest filing date).
- The examination prior to entering the National Stage, followed by a time period for filing amendments to the application, helps to put the application in condition for allowance in the different elected countries during the National Stage.
- The application enters each individual state in the same format, which streamlines and reduces prosecution costs.
- Some deference by individual states during the National Stage is given to the examination report that is prepared by the PCT examining authority. This usually results in much lower costs to prosecute the application in each individual country.
- The international filing date is the filing date for each elected state.
There are 3 broad stages in the PCT process as illustrated above: the Request, the Demand and the National Stage.
Request: The Request must be filed within 12 months after the filing of the earliest priority application. The Request must include the application, a designation of provisionally elected states and the required filing fees. A fee is charged for each provisionally elected state, but if 11 states are elected, the fee is not increased further. In other words, all states may be provisionally elected at the same cost of provisionally electing only 11 states. Maximum flexibility is provided by provisionally electing all states because the market may be studied during the examination of the PCT application to determine in which states to file during the National Stage.
Demand: The Demand may be filed within 19 months after the filing of the earliest priority application. The Demand must include an election of states provisionally elected in the Request and the required filing fees. The Demand is optional, and enters the PCT application into Chapter II, which includes the Preliminary Examination and allows for the submission of amendments to put the application in form for allowance and issue at the National Stage.
National Stage Entry: Prior to the National Stage, the National filing fee must be filed for each elected state. The deadline is specific to each state and non-English states require a translation of the application into language specified for that state. Prosecution costs will occur at the National Stage in each elected state to advance the application to issue.
For further information about the National Stage Application based on the International PCT Application click here.
The typical cost to prepare and file the PCT application with the Request and to provisionally elect all contracting states is $4000.00. The typical cost to prepare and file the Demand is $725.00.