How to File a PCT Application. Episode 35

(This episode first aired in 2018. Many aspects of the filing process have changed since then.)

Is This Episode Boring?

Before I start this episode, I just want to share something my daughter said when I told her I do a podcast about patents. Her response was, “That’s boring.”

And sometimes, she’s right. There are aspects of the patenting process that are really interesting, but other parts—like filling out forms—are not exciting.

Unfortunately, this episode is going to be one of those less exciting ones. Filing a PCT application involves filling out a lot of forms correctly, and while that’s not the most thrilling topic, it’s crucial if you want to properly file a PCT application. So, stick with me, and I’ll guide you through the process.

Where to File a PCT Application

In the last few episodes, I covered what PCT applications are and how they differ from U.S. applications. In this episode, I’ll walk you through how to file one.

Filing with the U.S. Receiving Office

I’m assuming that you’ve already filed a U.S. application, but that’s not required to file a PCT application.

PCT applications can be filed in various receiving offices around the world. A receiving office is a patent office in a particular country or region that accepts PCT applications.

• The receiving office then sends the application to the International Bureau, which acts as a central repository for PCT applications filed worldwide.

• You can file directly with the International Bureau (located in Switzerland), but if you’ve already registered as an e-filer with the USPTO, it’s easier to file through the U.S. Receiving Office.

Who Can File with the USPTO Receiving Office?

To file with the USPTO Receiving Office, at least one applicant must be a U.S. national or resident.

• If no applicants are U.S. nationals or residents, you must file with the International Bureau or another country’s receiving office.

• If you mistakenly file with the USPTO, it will still give you a filing date but will forward the application to the International Bureau.

For simplicity, I’ll assume that you qualify to file with the USPTO Receiving Office.

The Key Form: PCT/RO/101

The main difference between filing a U.S. patent application and a PCT application is that a PCT application requires filling out the Request Form (PCT/RO/101).

What Is the Request Form?

• The Request Form (PCT/RO/101) contains details about you (the applicant) and your invention.

• It’s similar to the Application Data Sheet used in U.S. applications.

• You can create a digital version of the request, which generates a Request ZIP file that you upload to the USPTO.

How to Fill Out the Request Form

There are two ways to fill out the Request Form:

1. Using PCT-SAFE software (downloadable, but not very intuitive).

2. Using ePCT (WIPO’s online system), which is much more user-friendly.

If you use ePCT, it automatically checks for missing information, helping prevent mistakes.

• To use ePCT, you need to set up a WIPO account and get a digital certificate.

• I highly recommend using ePCT, but for this episode, I’ll go through the PDF version of the request form.

You do get a small discount on PCT filing fees if you create the Request Form digitally, but if setting up ePCT or PCT-SAFE takes too long, it may not be worth the effort.

Where to Find the Request Form

To get the Request Form (PCT/RO/101):

• Go to the USPTO website or search “PCT Request Form”.

• The form is currently 24 pages long.

• Each section has numbered boxes, which I’ll go through.

The instructions for completing the form start on page 14 of the PDF. If anything is unclear, refer to that section.

Step-by-Step Guide to Filling Out PCT/RO/101

Box 1: Title of the Invention

• This should be between 2 and 7 words.

Box 2: Applicant Information

• The applicant can be an individual or a company.

• If the applicant is also the inventor, check the box.

• Enter:

• Name

• Address

• Phone number

• Fax number (if applicable)

• Registration number (if applicable)

• Email address (check the email authorization box).

• Format for name:

• Last name in ALL CAPS.

• Other names in lowercase.

• You can choose to receive email only or email + paper notifications.

• I recommend selecting both to avoid missing important messages.

Box 3: Multiple Applicants

• If there are multiple inventors or applicants, check this box and provide their details.

Box 4: Agent or Representative

• Enter the contact details of:

• An attorney or agent (if you have one).

• A common representative (if multiple applicants are involved).

• If you have an attorney, they should fill this out.

Box 5: Special Considerations

• DO NOT check any boxes here unless your application was filed in Germany, Japan, or Korea.

Box 6: Claiming Priority

• Enter details of your earlier U.S. application, including:

• Filing date

• Application number

• Country code (“US” for a U.S. application).

Box 7: International Searching Authority (ISA)

• Choose the PCT examiner who will conduct the search.

• Popular choices:

• USPTO (common choice).

• European Patent Office (EPO) (higher cost but beneficial for later European filings).

• Korean Patent Office (lower cost alternative).

Submitting Your PCT Application

Once you’ve completed the form:

1. Log into your USPTO account as a registered e-filer.

2. Select “New Application” → “International Application (PCT) for Filing in the U.S. Receiving Office”.

3. Enter:

• Title of invention

• Docket number (if applicable)

• Applicant name (person or entity)

• Customer number

• Correspondence address

4. Upload your files, including:

• PCT Request Form (RO/101)

• Specification, claims, and abstract

• Drawings

• Power of attorney (if applicable)

5. Pay the filing fees (calculated based on entity status and page count).

6. Submit and receive confirmation with your PCT application number.

Final Thoughts

Filing a PCT application can be complicated, and mistakes can be costly. I strongly recommend working with a patent attorney for international filings. I'm Adam Diament, and until next time, keep on inventing!