• Jeremy Rutman

To PCT or not to PCT

Updated: Feb 20

The PCT is an international patent law treaty that provides a unified procedure for filing patent applications, and protects inventions in each of its contracting states. A PCT application is made with a Receiving Office, resulting in a search performed by an International Searching Authority (ISA), and it is accompanied by a written opinion assessing the patentability of the invention. Very importantly, the application is followed by a preliminary examination by an examiner with a PhD in the relevant field who speaks three languages.

The PCT application itself does not result in the grant of a patent, since there is no such thing as an "international patent," and each national or regional authority has the discretion whether to grant a patent. It does, however, establish a filing date in all contracting states, that must be followed up with entering into national or regional phases to proceed towards grant of a patent. The PCT procedure leads to a standard national or regional patent application, which may be granted or rejected, in each jurisdiction in which a patent is desired.

Most patent applications take one of three routes:

1. Provisional (gives your invention 12 months protection)

2. PCT (Patet Cooperation Treaty)

3. National phase(s)

An application can be filed directly in countries of interest, without going through the PCT, and the provisional phase is also optional.

One advantage of the PCT process is that it enables one to file a single patent application and have that application be treated as an initial application for a patent in any country.

This can frequently be a wise move if you are contemplating securing patent rights in multiple countries for the following reasons:

A. It gives a chance to respond to a highly-regarded examiner, and all countries you ultimately file in will see and often defer to these arguments.

B. It delays the costs for final country-specific applications by 18 months (see diagram bellow)

C. In Israel, which has a PCT receiving office, you can choose to have an Israeli PCT examiner whom you may directly call and even meet if desired to overcome objections to the PCT filing. This gives you invaluable access to understanding the obstacles you might encounter in more advanced stages of patenting your invention.

Very importantly, since the number of times you may respond to the patent examiner are limited, and given that the objections to your patent claim will be similar, filing a PCT gives allows you to better prepare for national phase. Moreover, should you be granted a patent, the prior PCT filing date will give your invention copyright protection during the 18 months window between the PCT filing date and the patent filing date.

D. A positive result from some countries (e.g. US) can be used automatically in others (eg. Israel) - see here for a fuller report on this avenue, called the 'patent prosecution highway'

A drawback (or advantage, depending on your particular situation) of PCT filing is it does add a 18 months delay to final receipt of a patent from national offices, and adds the PCT fee to the total costs.

The filing fee for PCT is about 3000EU, while the cost of patenting in individual countries varies but currently averages around $1000 per country.

We can help with your PCT application and strategic planning

Diagram taken from wipo.org .

The diagram below takes into account the route not using the PCT.

To file a PCT international phase application in Israel, at least one inventor must have Israeli citizenship. For more details you can consult the relevant ILPTO page here.

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