PCT FAQs

A PCT application, also known as an international patent application, is a complete patent application filed under the Patent Cooperation Treaty (PCT). Although it is not possible to be granted an “international patent”, a PCT application provides protection for an invention in multiple countries simultaneously while it remains pending. Subsequently, by about 30 or 31 months from its earliest priority date, the PCT application must be converted into individual foreign patent applications in countries where protection is sought through a national/regional phase filing process.

Filing individual patent applications in multiple countries where protection is sought is a relatively expensive step. A PCT application typically costs less than filing applications in multiple individual countries at once. Therefore, higher costs and the decision about which countries to pursue protection in may be deferred for about 18 months while the PCT application remains pending.

A PCT application covers most major industrial countries around the world, which are party to the Patent Cooperation Treaty, and which are listed on the World Intellectual Property Organization (WIPO) website here. Example countries party to the PCT include the USA, all major European countries (directly or as part of the regional EP patent system), Japan, China, India, Korea, Canada, Brazil, Australia and New Zealand.

Countries that are not party to the PCT include, for example, Argentina, Pakistan, Taiwan, Venezuela. If patent protection is desired in countries not party to the PCT, separate patent applications must be filed in those countries within 12 months of the priority date. The Faeroe Islands and Greenland are also not party to the PCT. Applicants with interests in these countries should enter Denmark (specification mush be translated into Danish) 20 months after the priority date.

The deadline to file a PCT application that claims priority to one or more earlier applications is 12 months from the earliest priority date of the earlier application(s).

Extension of the 12-month deadline to file a PCT application is only available in a very limited set of circumstances, such as where the deadline can be demonstrated to have been missed unintentionally or in spite of all due care having been taken. These requirements differ depending on the individual countries where patent protection is ultimately pursued.

A PCT application is published soon after 18 months from the earliest priority date. The World Intellectual Property Office (WIPO) will confirm the date of publication on request.

Publication of a PCT application can be prevented if the PCT application is withdrawn before technical preparations for publication are completed. Withdrawal at an early date and no later than 3 weeks before the anticipated publication date is typically recommended.

After a PCT application is filed, an international search report (ISR) and written opinion of the international search authority (WOISA) is issued. The ISR typically lists earlier documents (“prior art”) considered relevant by the PCT examiner, and the WOISA provides an opinion from the PCT examiner on whether the invention meets patentability requirements such as novelty and inventiveness in view of the prior art.

It is not necessary to respond to the ISR and WOISA. These documents provide a non-binding opinion on patentability, although they will often be considered during examination of future national phase applications.

Options are available to progress a PCT application after objections are raised in the ISR and WOISA, including filing claim amendments under Art. 19 PCT, filing of informal comments, and/or requesting further examination under Art. 34 PCT (i.e. filing a “Demand for International Preliminary Examination”).

The claims of a PCT application can be amended under Art. 19 PCT. The claims may be amended to distinguish the claimed invention from prior art cited in the ISR and WOISA, to address any clarity issues raised in the ISR and WO, or for any other reason. The amendments to the claims will be published with the PCT application and therefore form the basis for provisional protection. However, unless a Demand for International Preliminary Examination is filed, the PCT examiner will not further examine the amended claims.

The deadline for filing claim amendments under Art. 19 PCT is the later of: 2 months from the date of transmittal of the international search report (ISR); and 16 months from the earliest priority date.

Informal comments can be filed at any time while the PCT application is pending and provide an opportunity to put arguments on record in response to the WOISA, although they will not be considered formally by any PCT examiner.

A Demand for International Preliminary Examination under Art. 34 PCT provides an opportunity to formally respond to any objections raised in the WOISA. The Demand is normally accompanied by claim amendments and/or arguments in favour of patentability along with an official fee. The PCT examiner will consider the amendments before issuing a further report.

The deadline for filing a Demand for International Preliminary Examination is the later of: 3 months from the date of transmittal of the international search report (ISR); and 22 months from the earliest priority date. Any claim amendments and/or arguments relating to the Demand must be filed by the same deadline and are therefore normally filed concurrently with the Demand.

The International Report on Patentability (IPRP) is a non-binding report on patentability issued near the end of the PCT application process.

If a Demand for International Preliminary Examination was not filed, the IPRP is drawn up under “Chapter I” based directly on the previously issued WOISA.

If a Demand for International Preliminary Examination was filed, the IPRP will be drawn up under “Chapter II” based on the previously issued WOISA but taking into consideration the claim amendments and/or arguments that were filed under the International Preliminary Examination procedure.

An advantage of filing amendments under Article 19, or with a Demand for International Preliminary Examination, is that the amendments are made ‘centrally’ before the PCT authority, but can apply to all future national and regional phase applications. This can reduce costs in comparison to filing amendments separately in each individual country or region later in the process.

If a Demand for International Preliminary Examination is filed with amendments and/or arguments that address objections raised in the WOISA, a more positive International Report on Patentability (IPRP) may issue. This may lead to quicker, successful examination in individual countries or regions in which the PCT application is subsequently filed. There may also be commercial benefits in having a more positive IPRP, including to satisfy investors or other potential stakeholders in the IP rights.

However, there is no guarantee that a more positive International Report on Patentability (IPRP) will issue. Further, even if a more positive IPRP does issue, individual countries or regions in which the PCT application is subsequently filed may not agree with the report and/or may carry out further examination independently. Accordingly, many applicants choose to wait for examination to start in individual countries or regions in which the PCT application is subsequently filed, before filing amendments or arguments that are tailored to the examination position in each country or region.

The deadline for entering a PCT application into individual countries or regions where protection is sought is typically 30 or 31 months from the earliest priority date of the PCT application. The specific deadlines for different countries and regions are listed on the World Intellectual Property Organization (WIP)) website here.

Only two countries have shorter deadlines for national phase filing, Luxembourg and Tanzania, and specifically if a Demand for International Preliminary Examination is not filed by 19 months from the priority date. However, these countries can be accessed through filing of applications before the European Patent Office (EPO) and African Regional Property Organization (ARIPO) by the normal 31 month deadline that is applicable to these regions.