Myths Of A PCT Application

PCT applications are patent applications filed with the World Intellectual Property Office (WIPO) in Geneva. These applications are filed under the Patent Co-operative Treaty comprising of 142 member countries (as of 24 December 2009). Under international patent laws , a patent application must be filed within one year of a priority application or public disclosure after which, the inventor looses his right to patent protection. The biggest advantage of a PCT application is to extend this one year period to 30 or 31 months depending on the rules of the country. In the United States, an inventor must file a complete patent application in the U.S within 30 months from the priority application. In India, the rule is 31 months. Some countries permit the applicant to file a patent application through the PCT upto 32 months with a late fee payment, like Europe.

Myth 1: A PCT application gives you international protection.

A PCT application unlike most patent applications can never result in a patent. This is because patent laws are territorial in nature. The national office of each country examines the patent applications and arrives at its own conclusion based on the search results and patent laws of that country. The main purpose of a PCT application is to give the applicant more time to file the foreign applications, also known as national phase entry, at a lower cost.

Myth 2: A PCT application can be filed in any country

PCT applications must be filed in the country of citizenship of the inventor or through the International Bureau. For example, a citizen of the U.S can file his PCT application through the United States Patent and Trademark Office (USPTO), known as the receiving office or through the International Bureau directly. Similarly, a citizen of India must file his PCT application through the Indian Patent Office (IPO), the receiving office or through the International Bureau directly.

Myth 3: As the PCT does not result in a patent, there is no examination and search conducted

PCT applications are examined by the International Preliminary Authority (IPA) and a search is conducted by the International Search Authority (ISA) as chosen by the applicant in the application. The fee of the chosen IPA and ISA is part of the total PCT application fee. The IPA opinion is sent to the Applicant who has a chance to respond and modify the claims in the application. This is important because the IPA opinion is taken into consideration by the national offices when examining the application and deciding to allow it.

Myth 4: After the PCT application is filed, there is nothing more to do

It is the duty of the applicant to enter national phase (foreign filings) of the countries of his choice within the time limits to do so. The WIPO will not remind the applicant of his deadline to file the corresponding foreign application within the time limit of that country. If the applicant does not file the corresponding application in one or more member countries of the PCT, the application will expire and the applicant will lose his right to patent protection.