PCT applications are administered by the World International Trade Organization (WIPO) (www.wipo.int). PCT applications cover most countries interested in patent filings, except Venezuela, Taiwan, and most Middle Eastern countries (see http://wipo.int/pct/en/pct_contracting_states.html).
If the invention was made in the U.S., a foreign license must be obtained from the USPTO or the applicant must wait 6 months after filing the U.S patent application. If you can’t wait, then you must file a Petition for foreign license. Most countries have similar rules. Failure to obtain a license can result in loss of patent rights. Retroactive foreign license is possible if the inventor failed to obtain a license through error and without deceptive intent and the invention is not detrimental to the U.S.
Advantages to filing a PCT and a US utility patent application at the same time..
You may file a PCT and a U.S. utility patent application as the same time. Usually the two applications will be assigned to different examiners. Although the claims in the two applications may be identical, their patentability may depend on the examiner’s review standards. The examiners often have different review standards – one may be harder or easier than the other.
When a PCT application is filed, a Preliminary Examination Report from the International Search Authority is conducted 16 to 18 months from the priority date. If the U.S. patent application has been filed, then it is more likely to be examined shortly thereafter. If the Preliminary Examination Report is favorable, then the response to the U.S. patent application is usually also favorable.
If the response from the U.S. examiner is less favorable than the Preliminary Examination Report, the U.S. patent application can be abandoned and then refilled as a U.S. national application by the 30 month deadline. The U.S. national application will usually be assigned to the Examiner who conducted the Preliminary Examination Report.
Priority Filing Dates for PCT applications:
PCT applications must be filed within year of the earliest claimed filing date. If the anniversary date falls on a weekend or holiday, then the PCT application must be filed by the next business day. There is no requirement that the earliest claimed priority date is the earliest filing date anywhere. Usually PCT application recites the U.S. provisional patent application filing date. If the Applicant has filed a provisional patent application and elects to file a U.S. utility patent application instead of a PCT application, most countries allow the PCT application to be filed later if statutory bar provisions do not apply and the U.S. utility patent application filing date is claimed as the priority date. In this instance, the provisional patent application filing date may be used as a priority date for the U.S patent application but it cannot be used as the priority date for the PCT application. Only Taiwan uses a ‘first application rule’ that requires the PCT application filed within 12 months of the provisional patent application.
National Stage Deadlines:
After filing the PCT application within 12 month of the earliest claimed priority date, the application must be filed in designated regions or individual countries. The act of applying in these regions or countries is called entering the ‘National Stage’. There are different critical deadlines for entering the ‘National Stage’ in these regions. For most countries (the U.S, Japan, China, Canada), the deadline for entering the National Stage is 30 months from the earliest claimed priority date. For China, the 30 deadline may be extended two months. For Canada, the deadline may be extended 12 months. A few countries have a 20 or 21 month deadline unless a Chapter II Demand document and fee are paid by the 19 month deadline from the earliest claimed priority date. Countries that use the 20 or 21 month deadline include Sweden, Finland and Switzerland). Some countries, such as European Patent Office (EPO) and Australia have a 31 month deadline. Sometimes the 31 month deadline for the EPO may be extended 2 months. Some countries, such as South Africa, have a 34 month deadline.
Continuation in Part Applications can be filed directly from a PCT Application:
You can file a CIP application directly from a PCT application. You don’t have to first file a U.S National application and then file a CIP. It is common to file a PCT application, then file a provisional patent application disclosing new subject matter, and then file a US CIP application disclosing the ppa material. The CiP application must be filed within 12 months of the PPA to claim priority to the PPA filing date.
In the U.S. it is common to include both apparatus and method claims in a U.S. patent application. If the subject matter of one claim can be practiced without infringing the other claim, then the application is deemed to recite two separate and distinct inventions and an election restriction is issued. One of the claims must be elected and the non-elected claim must be recited in a division application. The PCT practice is to make the applicant pay a supplemental search fee which can be relatively expensive.
When to Amend the Claims in a PCT application:
Generally it is substantially less expensive to amend the claims and resolve issues before entering the national stage. A Written Report and Preliminary Examination Report is sent to the application 18 mos from the priority date. If the Applicant files a Demand, he can amend the claims to overcome or address the issues raised in the Report. A Preliminary Examination Report is then issued. This process is less expensive than amending the claims after entering the National stage.
Who is the Applicant:
To request the U.S. Receiving Office, the Application must be resident of the U. S. Under the PCT, the Applicant can be the inventor, assignees, licensees, or unrelated parties such as the attorney. It is common for the U.S. based attorney to list himself as the Applicant for foreign inventers or companies.