Taking a technology to market globally means making difficult decisions about where to seek patent protection—decisions that must be made quickly, because patent rights are territorial and time-sensitive. The Patent Cooperation Treaty (PCT) system provides a mechanism to buy time: a single international filing preserves the right to pursue national patents in over 150 countries, while deferring the major translation, attorney, and government fee costs that multi-country patent prosecution entails. This article explains how the PCT works, what it costs, and when it is the right strategic choice.
What the PCT Does—and What It Does Not
The Patent Cooperation Treaty, administered by WIPO, was adopted in 1970 and entered into force in 1978. As of 2024, it has 157 contracting states. According to WIPO data, PCT filings in 2023 totaled approximately 272,600 applications, with China (69,610), the United States (55,678), and Japan (49,836) ranking as the top three filing countries.
A critical misconception about PCT applications: a PCT filing does not itself result in an “international patent.” No such thing exists. The PCT is a procedural mechanism that (1) establishes an international filing date recognized by all PCT member states, (2) conducts a centralized prior art search, and (3) extends the deadline for entering national or regional patent offices from 12 months (under the Paris Convention) to 30 months from the priority date. At the 30-month deadline, the applicant must individually enter each country or region where protection is sought, paying that jurisdiction’s fees and meeting its procedural requirements.
Phase 1: International Filing
A PCT application is filed with a “receiving office”—either the applicant’s national patent office (such as the JPO for Japanese applicants) or WIPO’s International Bureau directly. The application must include a request form (PCT/RO/101), specification, claims, abstract, and drawings where applicable.
The application may be filed in any language accepted by the receiving office. The JPO accepts Japanese-language PCT filings; the USPTO accepts English; the EPO accepts English, French, and German. If an applicant files in a language other than one of WIPO’s publication languages (English, French, German, Japanese, Korean, Portuguese, Russian, Chinese, Spanish, or Arabic), a translation into a publication language must be provided.
Where a priority application (an earlier national or regional filing) has been made, the PCT application must be filed within 12 months of that priority date to claim its benefit. The priority date then becomes the effective filing date for novelty purposes throughout all PCT member states.
Phase 2: International Search
Upon receiving the PCT application, the designated International Searching Authority (ISA) conducts a prior art search covering all publicly available patent documents and relevant non-patent literature. ISAs include the EPO, USPTO, JPO, and CNIPA (China National Intellectual Property Administration), among others. The applicable ISA depends on the receiving office and the application language.
The ISA produces two documents: the International Search Report (ISR), which lists prior art documents found, and the Written Opinion (WO/ISA), which provides a preliminary patentability assessment covering novelty, inventive step, and industrial applicability. These documents are delivered within approximately 16 months of the priority date.
While the Written Opinion is not binding on any national office, it serves as a valuable preview of the challenges the application may face in examination. A positive Written Opinion can accelerate prosecution in national phases; a negative one signals the need for claim amendments or a strategic reassessment before committing to the cost of multi-country prosecution.
Phase 3: International Publication
WIPO publishes the PCT application in its PATENTSCOPE database approximately 18 months after the priority date. Publication includes the application as filed and, once available, the ISR and Written Opinion. This compulsory disclosure serves the patent system’s information function—making the technical content publicly available even before national patents are granted.
Optionally, the applicant may request International Preliminary Examination (Chapter II), submitting written arguments and claim amendments in response to the Written Opinion before entry into national phases. The resulting International Preliminary Report on Patentability (IPRP Chapter II) provides an updated assessment of patentability across all claims. This report is not binding on national offices, but a favorable IPRP can facilitate accelerated examination under Patent Prosecution Highway (PPH) agreements in many countries.
Phase 4: National/Regional Phase Entry
The decisive step occurs at the 30-month deadline (measured from the priority date): the applicant must individually file in each country or region where protection is sought. This “national phase entry” requires submitting translations (if the PCT application language differs from the national office’s required language), appointing local attorneys, and paying national filing fees.
For Japan, national phase entry requires filing the Japanese translation with the JPO under Articles 184-4 et seq. of the Patent Act. For Europe, entry into the EPO regional phase similarly requires the relevant translations and fees. After national phase entry, each jurisdiction’s examination proceeds independently under its own national patent law.
Costs: What to Expect
PCT costs fall into two phases. The international phase costs are relatively modest; the national phase costs are where the bulk of the expense lies.
| Cost Item | Approximate Amount |
|---|---|
| WIPO international filing fee (electronic filing) | CHF 1,381 (~USD 1,550) |
| Transmittal fee (JPO receiving office) | JPY 8,400 (~USD 55) |
| Search fee (ISA = JPO) | JPY 108,900 (~USD 720) |
| National phase entry, US (USPTO fees only) | USD 1,000–3,000 |
| Translation to English (Japanese-origin application) | JPY 100,000–300,000 (~USD 700–2,000) |
Total costs for a PCT application through national phase entry in four jurisdictions (US, Europe, Japan, China) typically range from JPY 1 million to JPY 3 million (USD 7,000–20,000) in government fees and translation costs alone, before attorney fees. The total investment across all stages of prosecution through grant in multiple countries can reach several times that amount.
PCT Route vs. Paris Convention Direct Route
| Factor | Paris Convention Route | PCT Route |
|---|---|---|
| Foreign filing deadline | 12 months from priority date | 30 months from priority date |
| Prior art search | Independent in each country | Centralized through ISA |
| Early costs | Multiple national fees at 12 months | Single PCT fee; national fees deferred to 30 months |
| Best suited for | Few countries; early grant preferred | Many countries; uncertain commercialization timeline |
The PCT route is generally preferable when: the applicant is uncertain which markets will prove commercially significant; the technology is still being refined and the applicant wants flexibility to amend claims based on the ISR before national prosecution; or cost management during the first 30 months of the product life cycle is important. The Paris Convention direct route may be preferable when the target country list is short (two or three countries), when early patent grant is a priority, or when the PCT’s additional procedural steps and fees outweigh the deferral benefit.
PCT for SMEs: Practical Considerations
The PCT is not exclusively a tool for large corporations. For SMEs and individual inventors considering international protection, the PCT provides several advantages beyond cost deferral. The ISR and Written Opinion constitute an independent expert assessment of patent strength—useful for investor presentations, licensing negotiations, and internal go/no-go decisions on global prosecution. A strong ISR from the EPO or JPO can accelerate examination in Japan, the US, and dozens of other countries through PPH agreements.
Japan’s JPO provides reduced PCT fees for certain SMEs and universities as part of its support for small-scale innovators. Applicants should verify current eligibility criteria with the JPO or their patent attorney, as fee reduction programs are subject to periodic revision.
The next article covers patent invalidation trials—the procedure by which a granted patent can be challenged and, if successful, eliminated retroactively as if it had never existed.
コメント