Written By: Gabriella Fortugno (IP Lawyer) & William Zhang (Law Student)
Protecting your intellectual property (IP) is paramount. As you expand, securing patent protection across multiple jurisdictions requires a strategy to ensure the protection you seek is beneficial and cost-effective.
Fortunately, the Patent Cooperation Treaty (PCT) offers a streamlined, cost-effective method to protect your innovations globally, buy time, and defer immediate costs. Here is an overview of how the PCT process works and how it can help you secure broader global protection for your inventions.
What is the PCT?
The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO), comprising over 150 member countries, including Canada, the U.S., Europe and Asia.
Filing a PCT patent application helps preserve your option to seek patent protection in PCT member countries, giving you valuable time to evaluate commercial potential before committing to the higher costs of filing separately in multiple jurisdictions.
The Two Main Phases of the PCT Process
The PCT process is composed of two distinct parts: the International Phase and the National Phase.
1. The International Phase (First 30 Months)
In the international phase, you start by filing a PCT application through your local patent office (based on nationality or residency) or directly with WIPO. If you previously filed a domestic application, such as a U.S. provisional application, you will generally have 12 months to file the PCT application and claim that earlier priority date. Around month 16, an International Searching Authority reviews the application and issues an International Search Report identifying relevant prior art, along with a written opinion that provides an early, non-binding assessment of novelty, inventive step, and industrial applicability. At about month 18, WIPO publishes the application, which puts the public on notice of the invention. If needed, you may also amend the claims and request an optional international preliminary examination, sometimes called Chapter II, to receive a second opinion before entering the national phase.
2. The National Phase (Typically Month 30)
The international phase acts as a “pause button” for your foreign filing expenses. At the 30-month mark, you must enter the National Phase. This involves converting your single international application into individual patent applications in the specific countries where you want to seek protection.
Once you enter the national phase, each country or regional patent office examines the application under its own laws and procedures. While the International Search Report and written opinion can help you assess your chances and shape your filing strategy, they do not determine the final outcome, and each jurisdiction will make its own decision on patentability.
Why is Filing a PCT Application Often Recommended?
A PCT application is often recommended because it lets you preserve international filing options without taking on the full cost of foreign patent filings right away. Instead of filing separately in each country from the start, you can begin with one application, in one language, with one set of initial fees, and keep the door open to protection in more than 150 countries. It also gives you valuable time by extending your timeline from 12 months to about 30 or 31 months, which can be critical for securing funding, testing foreign markets, finding manufacturing partners, or deciding whether the invention is commercially viable. Just as importantly, the International Search Report provides an early look at potential patentability issues, helping you assess risks and make informed decisions before committing to the significant costs of the national phase.
Is PCT Right for Your Invention? Is PCT Right for Your Invention?
Patenting your innovation abroad requires careful timing and strategy. If you are eyeing global expansion, contact our IP experts today to map out a patent strategy tailored to your business goals and determine whether the PCT route is right for your business.