Applying for a Worldwide Patent: The PCT Route
The PCT route provides the opportunity to apply for patents in over 150 countries through a single procedure
A patent is a right to the commercial exploitation of an invention in a specific country. Patents are granted per country. An inventor who wants to apply for a patent on an invention must first consider the countries where the patent should be valid. It is the simplest and cheapest to apply for a patent in only one (mostly your own) country, but doesn't a groundbreaking invention deserves to be patented in multiple regions or even worldwide?
Fortunately, there are international procedures that facilitate the application and granting of a patent in multiple countries simultaneously. The most important of these is the Patent Cooperation Treaty (PCT). This treaty, signed by many countries, allows a patent to be registered in multiple jurisdictions through a single application. You can find the list of all 158 PCT contracting states on the site of the World Intellectual Property Organization (WIPO). This temporarily protects the invention in all participating countries. After registration, the examination process follows, and if the application is approved, the inventor must choose in which countries the patent should be pursued. Only then do the real costs begin, as processing and procedural fees are charged for each chosen country.
A maximum of 18 months after filing the application, it is published. Subsequently, the applicant must decide within a maximum of 30 months in which countries the patent will actually be pursued. This is because the PCT procedure itself does not lead to the granting of a patent. The actual granting of the patent must still take place separately in each country.
Applying for a Patent via the PCT Route
Applying for a patent via the PCT route can be done in three ways:
- Through the national patent office of the applicant's home country (e.g., USPTO in the USA, UKIPO in the UK, CIPO in Canada, or IPO in India);
- Through a regional patent office, such as the European Patent Office (EPO);
- Or directly through the World Intellectual Property Organization (WIPO), the executive body of the PCT treaty. Applications submitted to national or regional patent offices are forwarded to WIPO for processing.
As with any patent application, a search must then be conducted through the PCT route to determine the state of the art. This will reveal whether the invention is novel and patentable.
Such a search for novelty and patentability cannot be conducted by just anyone and must therefore be carried out by a designated International Search Authority. For applicants in the USA, UK, Canada, and India, this is typically their national patent office or a designated regional authority. If there has already been a novelty search conducted in the context of a national patent application, it may be usable in the PCT process. However, a limited local novelty search might not suffice for international purposes.
Once the search is complete and the novelty report has been published, the applicant must decide in which countries they wish to pursue the application. Based on this decision, the international application is divided into applications for the designated countries. Then, the procedures for examination and granting of the patent begin separately in each country.
The advantage of the PCT route is that an applicant does not have to make a definitive choice of countries until 30 months after the initial filing, allowing them to proceed until then with a relatively modest investment. Only after this does the meter start running in the individual countries.
The Costs of a PCT Application
The costs of applying for and maintaining a patent in multiple countries can be substantial. By using the PCT route, it is possible to defer some costs, but you should expect to pay between $10,000 and $20,000 for an application prepared by a patent attorney and for completing the PCT procedure.
Afterward, costs begin to accrue for the various national procedures. For each country, fees must usually be paid for filing, examination, assessment, and granting of a patent. Each country may choose to redo the entire process of novelty search and assessment. The applicant hopes, of course, that the country in question accepts the results of the PCT examiner's novelty search, but this is not guaranteed.
Additionally, translation costs may arise if a country does not accept an application in English. Once the patent is granted, an annual fee must be paid per country to maintain the patent. The amount of these fees varies by country and generally increases over time. Maintenance costs for a patent from years three to five are often manageable but can really rise significantly from years sixteen to twenty after filing.
Don't try this at home and contact your local patent attorney
Of course, you are a very intelligent and brilliant inventor :-), but filing patent applications that effectively protect your invention in various countries is truly work for specialists! So, to fully understand the patent application process and requirements in your country, it is essential to consult a qualified local patent attorney. The specific procedures, fees, and regulations can vary greatly between countries. Additionally, the authorities responsible for handling patent matters may differ depending on the country. A local expert will ensure that you meet all national requirements and help you navigate the process efficiently.