Some Important Facts about PCT Filing

What is PCT?

The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO-administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

What documents does applicant need to file when making a PCT filing?

While making an international patent application you must file the following:

Request form RO/101
Description
Abstract
One or more Claim(s)
Drawings (if referred to in description)
Fees

When should we file the application?

The PCT works on strict deadlines and thus applicants should be conscious about it. Failing to respond in required time frame could put your objective in jeopardy. In case you are claiming a priority from a National application you have 12 months of time from the earliest priority date in which you file your application. In case you don’t have a priority date you can file for an International application whenever you are ready to do so.

What if I am filing an international application based on an earlier application and the twelve month period for claiming priority has expired? (and Restoration of Priority is not available)?

This is allowable but you must ensure that your new application is filed before your earlier application is published. If you do not file your new application until after your earlier application is published then your later application is likely to be ineffective.

What happens if there are errors in my application or if I wish to change my application?

Opportunities to amend the claims and description arise at various stages of the PCT procedure and thus it is important for applicants to take care of while filing a PCT application. In case you don’t have much exposure in the domain of patent filing, hiring a patent drafting company could be of immense use.

Is it possible to amend claims after filing a PCT application?

Yes, there is a room for the amendment, but, its time frame is very limited and thus that should be taken into care while filing a PCT application. Normally such a period is within 2 months of the date of the publication of the Search Report.