Stages of a Patent Cooperation Treaty (PCT) Application

The Patent Cooperation Treaty (PCT) application is an administrative tool that allows for the prosecution of a single patent application in multiple member states. The prosecution in each member state is based on the earliest filing date of the single PCT application, which may be based on a US provisional patent application.

The single PCT application is filed in a member state acting as a receiving office in a PCT Contracting State where at least one applicant is a national or resident. The PCT application may also be filed directly with the Intellectual Bureau of the World Intellectual Property Organization (WIPO) as the receiving office for all applicants.

Once the PCT application has been filed with a receiving office, it enters the national stage approximately 30 to 31 months after the initial filing. At this stage, the applicant can select the countries where it would like to file and prosecute the PCT application.

International Search Report (ISR)

When filing a PCT application, the applicant selects a member state as the search authority to conduct an initial patentability search of the filed PCT application's claims.

Approximately 16 months after the initial filing, the selected search authority will issue an International Search Report (ISR) based on the searched claims. The ISR will identify relevant prior art and include a written opinion determining whether the invention, as claimed, is novel, involves an inventive step, and is industrially applicable.

If the ISR provisionally allows any claims, the applicant can use the allowed claims to elect to enter the Patent Prosecution Highway (PPH) during the national stage, expediting the national stage examination.

Alternatively, if the ISR does not provisionally allow the independent claims, the applicant can file an Article 19 to amend the claims in view of the ISR. At this stage, the applicant may only amend the claims. For instance, if the ISR does not provisionally allow any independent claims but deems some dependent claims as containing allowable subject matter, the applicant can file an Article 19 to amend the independent claims to include the limitations stated in those dependent claims. Similarly, the applicant may optionally amend the independent claims in a manner supported by the specification that will overcome the cited references.

Chapter II

The applicant can request a Chapter II examination about 22 months after the initial filing. If the applicant filed an Article 19 to amend the claim in view of the ISR, the applicant could demand a Chapter II examination to obtain allowable subject matter in the office where the PCT application was first filed before entering prosecution on the national stage.

Optionally, the applicant can apply for a Chapter II along with an Article 34 to further amend the claims while bypassing the need for an Article 19. Unlike an Article 19, in which only the claims may be amended, an Article 34 allows the applicant to amend the claims and the disclosure (specification and drawings). Accordingly, in addition to amending the claims, an Article 34 allows the applicant to correct the specification and drawings without adding any new matter.

International Preliminary Report on Patentability II (IPRP II)

After approximately 28 months following the initial filing, an International Preliminary Report on Patentability II (IPRP II) is issued, taking into account any Chapter 34 amendments filed by the applicant. The IPRP II may identify allowable subject matter not granted in the ISR based on the Chapter 34 amendments.

Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) speeds up the examination process for an application with corresponding applications filed in participating intellectual property offices. Under the PPH, participating patent offices agree that when an applicant receives a ruling from an office of first filing allowing at least one claim, the applicant may request a fast-track examination of the corresponding claim(s) in a corresponding patent application pending in a second patent office.

How TCP Law Can Help

A TCP Law patent attorney can help you prepare and file a PCT application, evaluate a corresponding ISR, and file national phase applications.

If you need assistance with preparing and filing a PCT application or with any other patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.