Explained: How to Protect Inventions Abroad with WIPO’s Patent Cooperation Treaty 

Thank you for your question. Please contact us by e-mail at pct.infoline@wipo.int for further clarification.

Thank you for your question. As you rightly point out, some applicants are interested in early grant and enforcement. However, others are more interested in having as much time as possible to decide where to enter the national phase. In our view, the PCT can offer something for either type of applicant. If early grant is the goal, you can always enter the national phase before 18 months. For example, once you receive the search report and written opinion from the International Searching Authority (ISA), you could actively enter the national phase early in the countries/regions where you would like an early grant. Some PCT member Offices (www.wipo.int/pct/en/filing/pct_pph.html) are part of the Patent Prosecution Highway (PPH), a system that allows an applicant to further accelerate national grant based on the positive written opinion of an ISA. While you may be able to do this without using the PCT System, you would miss out on the opportunity to keep your options open, both in terms of time and flexibility to pursue patent protection in multiple countries/regions, and you would not have the benefit of the ISA’s report and written option. (We should note that the PPH is only available in certain cases, depending on the Office where you would like to enter the national phase.) The bottom line is, if you want more flexibility and information, the PCT has more to offer and is not necessarily "slower" than direct national filings.

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Thank you for your question. PCT Article 23 www.wipo.int/pct/en/texts/articles/a23.html#_23 provides for the possibility of early entry into the national phase. In practice, applicants choose to delay the national phase entry for various reasons, such as waiting for the search report established by the International Searching Authority so as to have a better prospect of the application, preparing for funds like national fees and/or documents like translations, looking for local agents and assessing the designated States. But, applicants are not obliged to wait for certain months to enter the national phase. The PCT does not contain any restrictions on the timing of licensing and the nomination of the applicant for the purpose of the national phase entry. It is rather a decision between the parties concerned. In practice, it is settled down by concluding an agreement between or among the parties. What might be noteworthy is that the PCT Rule 92bis www.wipo.int/pct/en/texts/rules/r92bis.html#_92bis provides that one may request for a change in the applicant. For example, in the given case, the applicant may request the International Bureau, within 30 months from the priority date, to either add another applicant as a co-applicant or replace him/her with another applicant. Applicants may be recorded for all the designated States and any desired designated States. For any further questions, you may contact pct.infoline@wipo.int.

Thank you for your question. You are right that the PCT does not save you filing fees as such. PCT fees are additional to the national fees that you would still need to pay. However, using the PCT System can offer certain fee-related benefits: First, some Offices offer fee discounts for applications that have gone through the PCT procedure. In addition, keep in mind that although PCT fees are additional, paying them upfront allows you to postpone some of the major costs associated with international patent protection until a later stage (for example, translation costs and legal fees). At a later stage, you might also be more certain as to where you truly need protection and you might ultimately save money by not rushing into early decisions which turn out to be sub-optimal later on. PCT also saves you effort and money by applying the same set of formality requirements to both your PCT application and your national-phase entry application(s). In other words, by using the PCT system, you would not have to adapt your application to comply with different formality requirements in each country/region where you choose to pursue patent protection. If you are mostly interested in early grant and you do not require flexibility in terms of choice of where to pursue protection, filing direct national applications is worth considering. If you only need protection in, say, one or two countries, and you are certain that you will not change your mind later on, filing direct national applications might cost less initially, but it would limit your choices once you are past 12 months from the filing date of your initial application (the priority date).