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Using the Patent Cooperation Treaty in your Patent Filing Strategy

May 08, 2018

Does filing a Patent Co-operation Treaty (PCT) application lead to an “international patent”? The short answer is no. But with some strategic consideration, a patentee can secure patent rights for protecting the worldwide realities of their business.

The PCT is a multi-lateral treaty allowing an applicant to file a single application that will eventually become a patent application in more than one country. A PCT application can be particularly useful for deferring some government fees to a later date and can be particularly useful for securing a filing date while determining how the patentee’s proposed product fares in the market place. Because patent rights are nationally granted rights, an applicant seeking protection in a particular country must satisfy the requirements of the patent laws and rules of that particular country. A PCT application does not in itself lead to worldwide patent rights.

The PCT application process is generally a two-step process. The applicant first files a PCT application (an “international application”) through the patent office in their home jurisdiction (“step 1”). To pursue patent rights in one or more particular signatory countries to the PCT, the applicant must subsequently cause that international application to become a national application in whichever signatory countries in which the applicant wishes to seek patent protection (“step 2”). Step 2 is commonly referred to as having the application “enter national phase” in whichever countries the applicant has selected.

In theory, an applicant could elect to file national phase applications in numerous countries; however, government fees must be paid to file national phase applications in each respective country and electing a large number of countries may not be economically feasible.

When deciding in which countries to file national patent applications, applicants should consider factors including:

• What are the key sales markets of the applicant or of the applicant’s competitors?
• Where do potential competitors operate? Can the applicant reasonably expect to assert patent infringement in those countries?
• Where are the main manufacturing sites of the applicant’s products and of the applicant’s competitors’ products?
• What is the applicant’s budget for pursuing the patent portfolio?
• What is the applicant’s motivation for seeking patent rights? What are the timelines associated with the applicant’s motivation?

Canadian applicants typically file national patent applications in large or local economies such as the United States, European countries, Canada, China, Japan, and India. Other countries that applicants may consider include Australia, Mexico, Brazil, and South Korea.

Nevertheless, different types of applicants may employ a different filing strategy. For example, companies operating in the electrical and computer technology space often file national patent applications in the large economies and also in China and Taiwan, especially if the patent application relates to technology that is mainly manufactured in those countries. In contrast, companies operating in the pharmaceutical space may file national patent applications in the large economies as well as numerous other countries in which branded and generic products may co-exist.

When determining in which countries to seek patent rights, there is no “one-size-fits-all” solution. Applicants should be mindful of both the business and intellectual property landscape when crafting and amassing a patent portfolio.

Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to the information in the above article or any intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.