Patent Cooperation Treaty (PCT) Filings and Coordination

Patent Cooperation Treaty (PCT) Filings & Coordination

The Patent Cooperation Treaty (“PCT”) provides a forum under which an applicant can file for patent protection in multiple countries, including the United States, based on a single application. The World Intellectual Property Association (“WIPO”) states “By filing an international patent application under the PCT, applications can simultaneously seek protection for an invention in a large number of countries.” Currently, 154 countries on six continents are signatories to the PCT.

There are many advantages to filing a PCT application which an applicant may not know or a patent attorney lacking experience with these applications may not fully appreciate.

For example, applicants receive a preliminary search and Patentability Opinion from the selected International Search Authority within sixteen (16) months of filing a PCT application. Information found in the Patentability Opinion can inform the applicant’s attorney how best to amend claims and/or present arguments before the application enters “national stage” prosecution in the applicant’s designated countries. In this way, an experienced patent attorney will advantageously use the Patentability Opinion as a head start on prosecution.  

There is no such thing as a “worldwide” patent. Obtaining patents in multiple countries can quickly become very expensive. Patent protection will be desirable in some countries but unnecessary in others where the applicant has no plans to either market or manufacture its invention. A PCT application provides added value here because the PCT applicant is not required to enter national stage prosecution in any country until thirty (30) months after filing the initial application. This allows the applicant a full two and one-half years to research and determine market potential for its invention in select countries and regions (including the United States) before choosing individual countries where it will produce or sell its technology, thus establishing a need for patent protection in these jurisdictions.  

The PCT system operates under legal rules promulgated by WIPO. These rules are complicated, strictly enforced, and distinct from the rules governing patent prosecution non-PCT applications at the United States Patent and Trademark Office. Patent prosecution in countries outside of the U.S. requires coordinating services with attorneys and law firms native to each specific jurisdiction. Ideally, some knowledge of patent law within other jurisdictions, such as Europe, South Korea, Australia, and Brazil, for example, is useful to expedite prosecution and minimize client costs.

By leveraging his knowledge, experience, and existing relationships with other patent attorneys internationally, Dr. Miller will do everything possible to afford you all the benefits of a PCT application while coordinating and streamlining prosecution of national stage applications in multiple countries at the lowest possible cost.  

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You have created something beneficial and new. Let’s discuss legal and other practical aspects involved with protecting, developing, and monetizing your brainchild. Although I cannot provide legal advice to non-clients, I can schedule a fully confidential virtual meeting where we can discuss legal and business aspects of bringing a medical device or biotechnology product to market and answer general questions related to your concept.

Intellectual property attorney, Steven Miller, from head to waist photo