Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

Patent Cooperation Treaty (PCT): International Phase

The Patent Cooperation Treaty (PCT) allows applicants to extend their patent rights to member countries.

The International Phase is the first part of the PCT process.  An international application is filed in a receiving office (typically the US Patent Office for US applicants).  The application is published eighteen months from the earliest priority date.  A non-binding International Preliminary Examination Report (IPER) is produced.  The national phase is the second part.

To claim priority (i.e. the effective filing date) of an early filed US patent application, the international application must be filed within one year of the earliest priority date.

Filing an international application involves complying the US application to the numerous formalistic requirements and paying the international filing fee (~$2,500).

Advantages of filing a PCT International Application:

  • Delays the costs of foreign patent filing by up to thirty months
  • Allows time to evaluate US patent prosecution success before incurring foreign fees
  • Preserves patent rights in member countries even though they ultimately may not be pursued by the client

Disadvantages of a PCT versus direct foreign filing:

  • Not every country (e.g. Taiwan, Argentina, Chile) is a member of the treaty
  • The examination is delayed in the foreign countries
  • The extra cost of the international phase is added

The PCT is run by the World Intellectual Property Organization (WIPO).  WIPO publishes a list of PCT member countries.