Patent Cooperation Treaty (PCT) Applications

Patents are Geographic Country Specific Protection

A singular international patent does not exist – patents are issued and enforced geographically by individual countries. In other words, an inventor cannot get a single patent to protect an invention that is applicable in every country across the world. Countries issue their own patents, meaning that patent is only enforceable in the country where issued. United States (U.S.) patents protect the right to control the making, using, and selling of the invention in the U.S.

Inventor Tip: If you only want to seek patent protection in a few countries, it may be less expensive to not use the two-phase PCT process due to the cost of the filing fees. A U.S. utility application and the Patent Prosecution Highway (PPH) frequently are less expensive than the two-phase PCT process because the filing fees are lower. We highly recommend you seek the advice of a licensed patent practitioner (like our patent attorney) when seeking patent protection for an invention.

International Patenting can Start with a PCT Application

If you want to seek patent protection in more than a few countries outside of the U.S., there is an international patenting process. For utility and plant inventions, there is the International Patent Cooperation Treaty (PCT) two-phase patent application process. For design patents, there is the Hague System for International Registration of Industrial Designs. Unlike the Hague System, a PCT international patent application has two stages. For a PCT, the international application is the initial stage which essentially makes the invention patent pending worldwide. The national stage application is the second stage when patent applications are filed in each country where patent protection is sought.

PCT International Patent Pending Applications – Utility and Plant Inventions

The PCT includes 157 member contracting states (countries and groups of countries) that allow an inventor to simultaneously apply to patent their invention in nearly all countries of the world through a two-phase process. Utility and plant patents are suitable for PCT applications. First is the international phase where a PCT application is filed. Second is the national phase where patent applications are filed in the countries where protection is sought. 

Phase 1 – The International Phase – International Patent Pending

The World Intellectual Property Organization (WIPO) manages the PCT system. PCT stands for Patent Cooperation Treaty. Filing a PCT application results in pending status simultaneously in all member countries. A single “international” patent application is done instead of filing many separate national or regional patent applications. Filing a complete and proper international PCT application results in pending status in all of the participating countries where protection is sought. To better understand patent pending, read our article “What does Patent Pending Mean?“

Starting with a PCT application, patents for inventions are sought and obtained in any of the 157 contracting states (countries or regions of the world) participating with the WIPO based on a single application. The granting of patents remains under the control of the national or regional patent offices during the national phase. 

The first phase is the international phase or “international” application phase. In this phase, the inventor files the “international” application. This international PCT application does not give the inventor rights to any patent worldwide, however, it does apply in over 150 countries as a patent pending application. In other words, filing a PCT application results in patent pending status in over 150 countries around the world with a single application – essentially patent pending worldwide. The inventor or applicant typically files the PCT application in the country where they reside. There are exceptions. Consult a patent practitioner if you have any questions. 

After filing the PCT application, during the international phase and before the second stage or “national” application stage, a patent examiner will examine the patent application. The patent examiner conducts a preliminary search. Then the patent examiner writes an opinion regarding the patentability of the invention’s claims. Patentability in a PCT application is the novelty, inventive step, and industrial applicability of the claims of the invention. The Patent Office will send the examiner’s search report and written opinion to let the applicant know whether the claims are patentable. Applying for patent protection in your selected countries happens in the second phase, or national phase. 

Phase 2 – The National Phase of the Patent Cooperation Treaty

The national phase of the PCT application process is when you apply for patents in the individual countries where protection is sought. Patents for particular countries or regions are filed in those countries or regions. National phase processing and entry of an application for patent is done individually in each country or region. Each patent application must include the identifying information to connect it to the PCT application for that invention.

In this second phase, the inventor chooses in which countries they want protection. The inventor will then file a national phase patent application connected to the PCT application for that invention in each country chosen. Patents are issued and enforced by each individual country or region, therefore, the applicant will need to submit a patent application in each country where patent protection is desired. Once any of the connected patent applications for an invention has a notice of allowance or an issued patent, the Patent Prosecution Highway (PPH) can be use to accelerate the patenting process in other countries.