Seeking International Patent Protection—The PCT Option

By Jeffrey M. Kaden

So now that you have filed your patent application in the United States Patent Office in order to try to legally protect your invention in the United States, the question is raised as to how to gain protection in other countries. One way to do so is to file what is referred to as a Patent Cooperation Treaty (PCT) international application.  The PCT provides for a unified process for filing a patent application in order to protect one’s invention, but only in those countries that are members of the PCT.

Procedurally, a single filing of a PCT application is made with the Receiving Office (RO) of one of the member countries (typically the United States RO if the invention was created and developed in the U.S.). Such a filing must designate (preliminarily) the PCT member foreign jurisdictions in which patent protection is being sought. A PCT filing results in a search being performed by the International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention. It is optionally followed by a preliminary examination, which is performed by the International Preliminary Examining Authority (IPEA).

Finally, the PCT application undergoes national phase examination in each of the designated jurisdictions that are ultimately selected (not all jurisdictions that are designated preliminarily at the time of the PCT filing need to be selected for national phase examination). For each jurisdiction selected, if national phase examination is successful, a patent in that jurisdiction will eventually issue.

It is important to note that a PCT application does not itself result in the grant of a patent. Contrary to what many believe, there is no such thing as an “international patent,” and the grant of patent is the prerogative of the Patent Office of each and every foreign country. In other words, a PCT application, which does establish a filing date for all countries that are preliminarily designated, must be followed up with the step of entering into the national phases of the country or countries that are desired.

In summary, the procedure under the PCT, if followed to completion, leads to one or more standard foreign jurisdiction patent application filings, and each of these application filings may in turn be allowed or rejected according to the patent laws of the individual country.