These frequently asked questions about the Patent Cooperation Treaty (PCT) outline the PCT procedure from an applicant’s perspective.
1) WHAT IS THE PATENT COOPERATION TREATY (PCT)?
The PCT is an international treaty with more than 150 Contracting States. The PCT makes it possible to seek patent protection for an invention
simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or
regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the
THE PCT PROCEDURE INCLUDES:
FILING: you file an international application with BRUIPO,
complying with the PCT formality requirements, in English language, and you pay one set of fees.
Should the applicant wish to file directly to WIPO, applicants must first seek clearance from BruIPO to file the application abroad by formally
writing to BruIPO seeking security clearance. Failure to seek security clearance shall lead to conviction of a fine not exceeding B$5,000,
imprisonment for a term not exceeding 2 years or both (Section 33, Patents Order 2011).
INTERNATIONAL SEARCH: an “International Searching Authority” (ISA) (one of the world’s major patent Offices)
identifies the published patent documents and technical literature (“prior art”) which may have an influence
on whether your invention is patentable, and establishes a written opinion on your invention’s potential
INTERNATIONAL PUBLICATION: as soon as possible after the expiration of 18 months from the earliest filing date,
the content of your international application is disclosed to the world.
SUPPLEMENTARY INTERNATIONAL SEARCH (OPTIONAL): a second ISA identifies, at your request, published documents which
may not have been found by the first ISA which carried out the main search because of the diversity of prior art in
different languages and different technical fields.
INTERNATIONAL PRELIMINARY EXAMINATION (OPTIONAL): one of the ISAs at your request, carries out an additional
patentability analysis, usually on a version of your application which you have amended in light of content
of the written opinion.
NATIONAL PHASE: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your
initial application, from which you claim priority, you start to pursue the grant of your patents directly
before the national (or regional) patent Offices of the countries in which you want to obtain them.
2) HOW DO I PROTECT MY INVENTION IN SEVERAL COUNTRIES?
Patents are territorially limited. In order to protect your invention in
multiple countries you have a few options:
3) WHO USES THE PCT?
The PCT is used by the world’s major corporations, research institutions,
and universities when they seek international patent protection. It is also
used by small and medium sized enterprises (SMEs) and individual inventors.
4) WHAT IS THE EFFECT OF AN INTERNATIONAL PATENT APPLICATION?
In general terms, your international patent application, provided that it complies
with the minimum requirements for obtaining an international filing date, has the
effect of a national patent application (and certain regional patent applications)
in or for all PCT Contracting States. Moreover, if you comply with certain formal
requirements set out in the Treaty and Regulations, which are binding on all of
the PCT Contracting States, subsequent adaptation to varying national (or regional)
formal requirements (and the cost associated therewith) will not be necessary.
5) WHO HAS THE RIGHT TO FILE AN INTERNATIONAL PATENT APPLICATION UNDER THE PCT?
You are entitled to file an international patent application if you are a national or resident
of a PCT Contracting State. If there are several applicants named in the international application,
only one of them needs to comply with this requirement.
6) WHAT ARE THE COSTS ASSOCIATED WITH THE FILING AND PROCESSING OF AN INTERNATIONAL
APPLICATION UNDER THE PCT? WHAT ARE THE COSTS FOR ENTERING THE NATIONAL PHASE?
PCT applicants generally pay three types of fees when they file their international applications:
Because an international patent application is effective in all PCT Contracting States, you do not
incur, at this stage in the procedure, the costs that would arise if you prepared and filed separate
applications at national and regional Offices.
The fees you will need to pay as you enter the national phase represent the most significant
pre-grant costs. They can include fees for translations of your application, national (or regional)
Office filing fees and fees for acquiring the services of local patent agents or attorneys.
In several Offices however, national filing fees are lower for international patent applications
than they are for direct national applications in recognition of the work already done during
the international phase. You should also remember that in the case of all granted patents,
whether or not the PCT is used to obtain them, you will need to pay maintenance fees in each
country in order to keep the patents alive.
7) ARE THERE ANY FEE REDUCTIONS AVAILABLE UNDER THE PCT?
PCT fee reductions of B$200 are available to all applicants who file electronically.
8) HOW LONG DOES THE PCT PROCESS TAKE?
You have, in most cases, up to an additional 18 months from the time you file your
international patent application (or usually 30 months from the filing date of the
initial patent application of which you claim priority) before you have to begin
the national phase procedures with individual patent Offices and to fulfill the
This additional time can be useful for evaluating the chances of obtaining patents
and exploiting your invention commercially in the countries in which you plan to
pursue patent protection, and for assessing both the technical value of your
invention and the continued need for protection in those countries.
It is important to note, however, that you do not have to wait for the
expiration of 30 months from the earliest filing date of your patent application
(“priority date”) before you enter the national phase – you can always request
an early entry into the national phase.
Since, in the national phase, each patent Office is responsible for examining
your application in accordance with national or regional patent laws, regulations
and practices, the time required for the examination and grant of a patent varies
across patent Offices.
9) WHAT DOES IT MEAN TO “CLAIM PRIORITY” OF AN EARLIER PATENT APPLICATION?
Generally, patent applicants who wish to protect their invention in more than
one country usually first file a national or regional patent application with
their national or regional patent Office, and within 12 months from the filing
date of that first application (a time limit set in the Paris Convention),
they file their international application under the PCT.
The effect of claiming the priority of an earlier patent application is that
a patent shall not be invalidated by reasons of any acts accomplished in the
interval, such as another filing, the publication or sale of the invention.
10) IN WHAT LANGUAGES CAN AN INTERNATIONAL PATENT APPLICATION BE FILED?
BruIPO accepts an international patent application in English language only.
11) What is a PCT international search?
A PCT international search is a high quality search of the relevant patent documents.
The high quality of the search is assured by the
standards prescribed in the PCT for the documentation to be consulted, and by
the qualified staff and uniform search methods of the ISAs, which are all experienced
patent Offices. The results are published in an international search report and a
written opinion of the ISA on the potential patentability of your invention.
12) WHAT IS AN INTERNATIONAL SEARCH REPORT?
The international search report consists mainly of a listing of references to
published patent documents and technical journal articles which might affect
the patentability of the invention disclosed in the international application.
The report contains indications for each of the documents listed as to their
possible relevance to the critical patentability questions of novelty and inventive
step (non-obviousness). Together with the search report, the ISA prepares a written
opinion on patentability, which will give you a detailed analysis of the potential
patentability of your invention. The international search report and the written
opinion are sent to you by the ISA.
13) WHAT IS THE VALUE OF THE INTERNATIONAL SEARCH REPORT?
The report enables you to evaluate your chances of obtaining patents in PCT
Contracting States. An international search report which is favorable, that is,
in which the documents (prior art) cited would appear not to prevent the grant
of a patent, assists you in the further processing of your application in those
countries in which you wish to obtain protection. If a search report is unfavorable
(for example, if it lists documents which challenge the novelty and/or inventive
step of your invention), you have the opportunity to amend the claims in your
international patent application (to better distinguish your invention from those documents),
and have them published, or to withdraw the application before it is published.
14) WILL AN INTERNATIONAL SEARCH BE CARRIED OUT FOR ALL INTERNATIONAL APPLICATIONS?
As a rule, an international search is carried out for all international applications.
There are instances, however, where the ISA will not be able to carry out a search.
For example, where the international application relates to subject matter which the
ISA is not required to search or if the description, claims or drawings are not
sufficiently clear for it to carry out a meaningful search. In such cases, the
ISA will issue a declaration that no international search report will be issued.
There are also circumstances where the ISA will issue a partial search report.
This can occur when, in the view of the ISA, the international application contains
multiple inventions but the applicant has not paid additional search fees to cover
the work required to search those additional invention(s).
15) WHAT IS THE WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY?
For every international application, the ISA will establish, at the same
time that it establishes the international search report, a preliminary
and non-binding opinion on whether the invention appears to meet the
patentability criteria in light of the search report results. The written opinion,
which is sent to you together with the international search report, helps you
understand and interpret the results of the search report with specific reference
to the text of your international application, being of special help to you in
evaluating your chances of obtaining a patent. The written opinion is made
available to the public at the same time as the application.
If you do not request international preliminary examination the written
opinion will form the basis of the international preliminary report on
patentability (IPRP Chapter I) which will be provided, together with its
English translation at the end of the international phase to the national
(or regional) patent Offices; the decision on the granting of a patent
remains the responsibility of each of the national or regional Offices in
which you enter the national phase; the IPRP (Chapter I) should be
considered by the Offices but is not binding on them.
16) WHAT IS THE PCT SUPPLEMENTARY INTERNATIONAL SEARCH?
Supplementary international search permits the applicant to request,
in addition to the international search (the “main international search”),
one or more supplementary international searches each to be carried out by
an ISA other than the ISA which carried out the main international search.
The additional search has the potential of reducing the risk of new patent
documents and other technical literature being discovered in the national
phase since, by requesting supplementary search the applicant can enlarge
the linguistic and/or technical scope of the documentation searched.
17) WHAT IS THE SUPPLEMENTARY INTERNATIONAL SEARCH REPORT?
The supplementary international search report is generally similar in content
and appearance to the main international search report; it contains a listing
of references to patent documents and other technical literature which may
affect the patentability of the invention claimed in the international application.
However, it does not repeat documents which have already been cited in the
international search report, unless this is necessary because of new relevance
when read in conjunction with other documents discovered during the supplementary
international search. On occasion, the supplementary international search report
may contain more detailed explanations than those in the main international search
report. This is due to the fact that, unlike the main international search,
no written opinion is established with the supplementary international search
report, and these additional details are helpful for a full understanding of
the references listed.
18) WHAT DOES INTERNATIONAL PUBLICATION UNDER THE PCT CONSIST OF?
WIPO publishes the international application shortly after the expiration
of 18 months from the priority date (if it has not been withdrawn earlier),
together with the international search report. PCT international applications
are published online on PATENTSCOPE, a powerful, fully searchable database with
flexible, multilingual interfaces and translation tools to assist users and the
public in understanding the content of published applications.
19) CAN THIRD PARTIES ACCESS DOCUMENTS CONTAINED IN THE FILE OF THE INTERNATIONAL APPLICATION? IF SO, WHEN?
Until international publication (18 months after the priority date), no third party
is allowed access to your international application unless you as applicant request
or authorize it. If you wish to withdraw your application (and you do so before
international publication), international publication does not take place and,
as a consequence, no access by third parties is permitted. However, when international
publication occurs, certain documents in the international application file are made
available on PATENTSCOPE together with the published international application,
for example, the written opinion of the ISA and any informal comments on the
20) WHAT IS INTERNATIONAL PRELIMINARY EXAMINATION?
International preliminary examination is a second evaluation of the potential patentability
of the invention, using the same standards on which the written opinion of the ISA was based.
If you wish to make amendments to your international application in order to overcome documents
identified in the international search report and conclusions made the written opinion of the ISA,
international preliminary examination provides the only possibility to actively participate in the
examination process and potentially influence the findings of the examiner before entering the
national phase – you can submit amendments and arguments and are entitled to an interview with
the examiner. At the end of the procedure, an international preliminary report on patentability
(IPRP Chapter II) will be issued.
The International Preliminary Examining Authorities (IPEAs) which carry out the international
preliminary examination are the ISAs mentioned above. For a given PCT application, there may
be one or more competent IPEAs; your receiving Office can supply details or you may consult the
PCT Applicant’s Guide and the PCT Newsletter.
21) WHAT IS THE VALUE OF THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER II)?
The IPRP (Chapter II) which is provided to you, to WIPO and to the national (or regional)
patent Offices, consists of an opinion on the compliance with the international patentability
criteria of each of the claims which have been searched. It provides you with an even stronger
basis on which to evaluate your chances of obtaining patents, in most cases on an amended application,
and, if the report is favorable, a stronger basis on which to continue with your application before
the national and regional patent Offices. The decision on the granting of a patent remains the
responsibility of each of the national or regional Offices in which you enter the national
phase; the IPRP (Chapter II) should be considered by the Offices but is not binding on them.
22) HOW DO I ENTER THE NATIONAL PHASE?
It is only after you have decided whether, and in respect of which States, you wish to proceed
further with your international application that you must fulfill the requirements for entry
into the national phase. These requirements include paying national fees and, in some cases,
filing translations of the application. These steps must be taken, in relation to the majority
of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority
date. There may also be other requirements in connection with the entry into the national
phase – for example, the appointment of local agents.
23) WHAT HAPPENS TO MY APPLICATION IN THE NATIONAL PHASE?
Once you have entered the national phase, the national or regional patent Offices concerned begin
the process of determining whether they will grant you a patent. Any examination which these Offices
may undertake should be made easier by the PCT international search report and the written opinion
and even more by an international preliminary examination report.
24) WHAT IS THE ROLE OF WIPO IN THE PCT?
WIPO administers the PCT. It also serves as Secretariat to member States bodies such as the PCT Assembly,
the PCT Working Group and the Meeting of International Authorities. Further, for each PCT application
filed, WIPO is responsible for:
25) WHAT ARE THE ADVANTAGES OF THE PATENT COOPERATION TREATY?
The PCT System has many advantages for you as an applicant, for the patent Offices and for the general public:
Ultimately, the PCT:
26) WHERE CAN I FIND OUT MORE ABOUT THE PCT?
On the PCT website and in the various PCT publications you will find information in various
language versions, including: PCT Applicant’s Guide; PCT Newsletter (monthly); PCT Highlights;
Learn the PCT Video Series; PCT Distance Learning Course; Seminars; and PCT Webinars.