PCT International Patent Application Timelines and Deadlines. Episode 36

Overview of PCT Applications

So far, we’ve covered the key aspects of PCT (Patent Cooperation Treaty) applications, including:

• What PCT applications are used for.

• The differences between U.S. and PCT applications.

• How to file a PCT application with the USPTO Receiving Office.

If you are not interested in seeking patent protection outside the United States, you can skip these episodes on PCT and foreign applications. There will probably be only two more before I return to discussing U.S. applications, and later I will cover more details of the PCT process.

The End Goal of a PCT Application

A PCT application does not directly turn into an international patent—because there is no such thing as an international patent.

What it does is allow your international patent application to be converted into national stage or regional stage applications. These national or regional applications are what ultimately become patents in various countries.

To secure foreign patents, you must be aware of critical deadlines that determine whether your PCT application can be converted into national applications.

The Two Most Important Deadlines: 12 Months and 30 Months

There are many different deadlines in the PCT process, triggered by various events. However, most of these deadlines are optional steps that do not necessarily kill your patent if missed.

The two most important deadlines are:

• 12-month deadline

• 30-month deadline

These deadlines are calculated from the filing date of your first application related to the invention.

The 12-Month Deadline

If you filed a U.S. patent application first, the 12-month deadline is the deadline to file your PCT application.

• If you miss the 12-month deadline, you are generally prohibited from filing a PCT application, and you will lose any potential foreign patent rights.

• If you filed a PCT application first, this deadline does not apply to you.

The 30-Month Deadline

The 30-month deadline is critical because it is when you must decide which specific countries you want your PCT application to enter for nationalization.

The purpose of the 30-month period is to allow time to strengthen your application so that it will be allowed quickly when it enters the national stage in different countries.

PCT Timeline and Additional Important Deadlines

Let’s go through a timeline to understand what happens after filing a PCT application.

Filing the PCT Application (12 Months After U.S. Filing Date)

When you file your PCT application, this is known as entering Chapter I of the PCT process.

16 Months After U.S. Filing Date: Search Report and Written Opinion

About four months after filing your PCT application (or 16 months after your U.S. filing date), you will receive a Search Report and Written Opinion from the International Searching Authority (ISA).

This written opinion from the PCT examiner will indicate whether your claims are patentable.

If the written opinion is positive, it means the examiner considers your claims novel, inventive, and industrially applicable (equivalent to novel, non-obvious, and useful in the U.S.).

A positive opinion makes it easier to obtain patents in foreign countries since you already have a favorable review from a PCT examiner.

18 Months: Optional Article 19 Amendments

At 18 months, your PCT application will be published.

This does not trigger any mandatory deadlines, but it makes your application publicly available.

By 18 months, you also have the optional opportunity to make Article 19 amendments.

• Article 19 amendments allow you to make simple claim changes without requiring a new examination.

• If you don’t make any changes, nothing happens—your claims remain the same.

22 Months: Filing a Demand (Entering Chapter II)

By 22 months, you can request further examination by filing a demand.

• Filing a demand moves your application into Chapter II of the PCT process.

• This step requires paying additional fees.

• If you choose to make amendments at this stage, they are called Article 34 amendments.

If you received a positive written opinion, you probably don’t need to file a demand. However, if your initial opinion was negative, this is your chance to submit arguments and amendments to persuade the examiner.

28 Months: International Preliminary Examination Report

By 28 months, if you filed a demand, you will receive an International Preliminary Examination Report (IPER) from the PCT examiner.

This report provides an updated opinion on whether your claims are patentable after considering your Article 34 amendments.

30 Months: Nationalization Deadline

By 30 months, you must decide where to nationalize your PCT application.

To do this, you must contact foreign patent attorneys in the countries where you want to pursue patents.

For example, if you want a Mexican patent, you would contact a Mexican patent attorney before 30 months and inform them that you want to nationalize your PCT application in Mexico.

Each country may have specific requirements, such as:

• Translations of your application

• Powers of attorney

• New declarations

What If You Received a Negative PCT Opinion?

If the PCT examiner issued a negative patentability opinion, you must decide whether it’s worth nationalizing your application.

A negative opinion means you are likely to receive rejections in multiple countries, making the process expensive and time-consuming.

If you choose to proceed, you will have to submit arguments and amendments in each country individually, increasing costs.

Exceptions to the 30-Month Deadline

While 30 months is the standard deadline, there are exceptions:

• Some countries, like Uganda, Tanzania, and Luxembourg, may require earlier nationalization at 19 or 20 months.

• Some countries, like Europe, allow 31 months to nationalize.

• Canada allows late nationalization up to 42 months with late fees.

Key Takeaways

There are many optional steps in the PCT process, but the most important deadlines to remember are:

1. 12 months after your U.S. application → You must file your PCT application.

2. 30 months after your U.S. application → You must nationalize your PCT application.

3. 22 months after your U.S. application → If you want to make amendments and request further review, you must file a demand.

These deadlines will help you plan ahead and maximize your chances of obtaining foreign patents. I’m Adam Diament, and until next time, keep on inventing!