It is a fact that there is no such thing as an “international patent” where one patent gives patent rights for all countries. This is because each country has their own patent office, laws, and jurisdiction. As such, to get patent rights in each country, you need apply for a patent in each country. An exception to this is that some countries have a consolidated application such as the European Union, for example. The main point is you still need to apply for a patent in each country you want patent rights is, there is no one patent that covers all countries. The closest thing, however, is the PCT Patent Application, properly termed the PCT Application. Importantly, the PCT Application is not a patent yet. It is better understood as a place holder, or time extender, to hold your place in line with international patent offices. Before the PCT application expires, you convert it into a full non-provisional patent application in each country you want to apply for patent rights in. So how does it work?
- A PCT Application establishes a patent filing date for 30 months, or extends a previous patent filing date to a total of 30 months. This filing date can then be used by any non-provisional patent application filed in a participating PCT country, before the PCT expires.
- A PCT Application in itself does not give patent rights, the exclusive right to make or sell an invention. It is a date placeholder, or date extender, so that a filing date can be used by a non-provisional patent application later.
- A PCT Application gives you protection for your invention so long as you eventually convert it into a non-provisional patent application in each country you want patent rights in.
Common examples of use:
Example 1: Filing the PCT by itself, stand-alone
Inventor Joe files a PCT application on January 1, 2015. This is the first patent application he has filed for this invention anywhere, so the PCT is stand-alone, and not linked to any other patent applications. The PCT lasts for 30 months and will expire on July 1, 2017. Any time before July 1, 2017, Joe can convert his PCT into a non-provisional full patent application in any country that participates in the PCT. Any full patent application he files will use the January 1, 2015 date of the PCT. For example, Joe could file a patent application in the US before July 1, 2017 and the US application will inherit the January 1, 2015 date of the PCT. This ensures that Joe’s US patent application gets a January 1, 2015 date, and will be first eligible for a patent, before anyone who may have filed a patent application for a similar invention after January 1, 2015. Joe can use the same PCT to convert into other international patent applications the same way, as long as they are all filed before the PCT expires on July 1, 2017. For example, he could convert the PCT into a Canada patent application or Australian patent application. As long as they are all filed before the PCT expires on July 1, 2017, they all inherit the original January 1, 2015 filing date of the PCT.
Example 2: Filing PCT to extend a previous patent application’s filing date
Inventor Joe files a Provisional Patent Application in the US on January 1, 2015. Provisional applications allow Joe 12 months of time to file full non-provisional patent applications in each country Joe wants to apply for patent rights in. For Joe, his provisional patent application will expire January 1, 2016 (12 months after filing). However, Joe is not ready to file a full patent application in every country by this time. Further, Joe wants to make sure he keeps the January 1, 2015 date of his provisional patent to keep his place in line. If he lets his provisional patent expire, he will lose his January 1, 2015 date, potentially allowing someone else to be first in line. To keep his January 1, 2015 date, Joe files a PCT Patent Application before January 1, 2016 (the expiration of the provisional), which links to his PCT. He must file the PCT before the provisional patent application expires. The result is the PCT application will last 30 months from the provisional patent filing date and Joe has essentially extended his provisional patent application 18 additional months. 18 additional months because the PCT is 30 months total, 12 from the original provisional patent app then 18 more after filing the PCT, equally 30 total. This is 18 additional months Joe has to file non-provisional full patent applications in each country he wants to apply in and they can all use the original January 1, 2015 date of his provisional patent application. Joe’s PCT will expire on July 1, 2017, which is 30 months from the provisional patent application date.
Participating PCT Countries
The PCT can only be converted into full non-provisional patent applications or be used to extend a previous patent application for these countries that participate in the PCT:
Antigua and Barbuda
Bosnia and Herzegovina
Central African Republic
Democratic People’s Republic of Korea
Iran (Islamic Republic of)
Lao People’s Democratic Republic
Papua New Guinea
Republic of Korea
Republic of Moldova
Saint Kitts and Nevis
Saint Vincent and the Grenadines
Sao Tome and Principe
Syrian Arab Republic
The former Yugoslav Republic of Macedonia
Trinidad and Tobago
United Arab Emirates
United Republic of Tanzania
United States of America