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File an international patent application through the Patent Cooperation Treaty (PCT)—Patent Cooperation Treaty kit

 

Patent Cooperation Treaty kit

Learn more about how to file an international patent application through the Patent Cooperation Treaty (PCT).

When you're ready to file, use our PCT e-filing online service.

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What is the PCT?

The PCT is an international treaty with 157 contracting states, administered by the World Intellectual Property Organization (WIPO).

The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single "international" patent application instead of filing several separate national or regional patent applications.

The PCT system has 2 phases: the "international phase" and the "national phase".

During the international phase, you may file an international patent application, have it searched and receive an opinion on patentability. This single international application is valid in as many as 157 contracting states.

Then, in the national phase, you can seek patent protection in any of the PCT contracting states at the national level. The granting of patents remains the responsibility of each national patent office.

For more information, consult WIPO's guide:

Why would I file internationally?

A Canadian patent does not protect your invention in another country.

For example, suppose you have invented a mountain-climbing snowmobile and hope to corner the market in countries where the machine may be in demand. You will probably want a patent not only in Canada, but also in the United States, Austria, Germany and wherever else a mountain-climbing snowmobile could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you.

By filing internationally, you avoid having to file separate patent applications in each country and give yourself time to determine which countries you want to have a patent in.

What is WIPO?

WIPO is an agency of the United Nations dedicated to intellectual property promotion. In its role as administrator of the PCT, WIPO is referred to as the International Bureau (IB) and carries out 5 major processing functions:

  • Receives and stores the application
  • Receives amendments to the patent application claims
  • Undertakes international publication of the application
  • Communicates your application and an International Search Report (ISR) to designated patent offices in the countries where you choose to seek patent protection
  • Communicates an International Preliminary Report on Patentability (IPRP) to designated (Chapter I) or elected (Chapter II) patent offices in the contracting states where you choose to seek patent protection (see below for information on PCT chapters)

In addition, WIPO produces various materials that provide information related to patents and the PCT:

  • PCT Applicant's Guide, a comprehensive guide that addresses each step of the PCT filing process, including requirements for national entry into the contracting states
  • PCT Gazette, which is published weekly and contains notices and indexes relating to the publication of individual international applications and general information concerning the PCT
  • PCT Glossary, which aids in the understanding, drafting or translating of PCT documentation
  • PATENTSCOPE®, a database that houses PCT applications that have been published along with national entry information, and facilitates the search of international patent applications

WIPO forms

WIPO uses standard forms to collect information during the application process. These forms are available on ePCT for use in online filing. WIPO's PCT forms page also offers editable PDF copies of the required PCT forms, as well as some samples of properly completed forms.

Minimum requirements for filing an international patent application

You are entitled to file an international patent application if you are a national or resident of one of the PCT contracting states. If there are several applicants named in the international application, at least one of them needs to comply with this requirement. An international patent application must be prepared according to certain formal requirements set out in the PCT and its regulations. WIPO's PCT Applicant's Guide – International Phase (PDF version) sets outs these requirements. If you follow these requirements, you will be able to enter national phase in any PCT contracting state without having to adapt to various national or regional formality requirements.

CIPO's roles

CIPO plays a role in both the international and national phases of the PCT:

  • Receiving Office (RO) – The national office, intergovernmental or international organization with which the international application is filed and which checks and processes it according to the PCT and its regulations.
  • International Search Authority (ISA) – An authority (either a national office or an intergovernmental organization) appointed by the PCT Assembly to carry out searches on international patent applications. It establishes ISRs and the Written Opinion of the International Searching Authority (WO-ISA).
  • International Preliminary Examination Authority (IPEA) – An authority (either a national office or an intergovernmental organization) appointed by the PCT Assembly to carry out the international preliminary examination procedure. Its task is to establish the international preliminary report on patentability (Chapter II of the PCT).
  • Designated Office (DO) – A national office of or acting for a state designated in an international application under Chapter I of the PCT, in which the applicant may seek patent protection.
  • Elected Office (EO) – A national office of or acting for a state elected by the applicant under Chapter II, in which the applicant may use the results of the international preliminary examination.

International phase

The international phase of the PCT procedure consists of 2 chapters. Chapter I relates to filing, an international search and written opinion and international publication, while Chapter II relates to further international preliminary examination.

Chapter I of the PCT begins by default with filing a PCT patent application including a request form (e-form in ePCT online filing service or PCT/RO/101 fillable PDF form). During this chapter, the application is filed, the ISA conducts a search, examines the application and issues an ISR along with a WO-ISA and the application, ISR and WO-ISA are published.

Chapter II of the PCT is optional. If you wish to proceed with Chapter II following Chapter I, you can file a PCT/IPEA/401 (PDF version) form (referred to as a "demand") with an IPEA. During this chapter, you can submit arguments and/or amend your application, and receive additional analysis by an examiner.

Fees

For the international application to be recognized by the IB of WIPO, it must also be accompanied by the required fees:

  • Transmittal fee – This fee is intended to compensate the RO for the work it does in connection with the international application (Chapter I).
  • International filing fee – This is a fee paid to the RO for the benefit of the IB when filing an international application (Chapter I).
  • Search fee – This fee is paid to the RO for the benefit of the ISA for carrying out the international search (Chapter I).
  • Handling fee – This is a fee paid to the IPEA for the benefit of the IB for filing a demand for international preliminary examination of the international application (Chapter II).
  • Preliminary examination fee – This fee is paid to the IPEA for conducting an international preliminary examination of the application (Chapter II).

Late payments are subject to an additional fee (Rule 16bis.1, Rule 58bis.1). Visit CIPO's How to Make a Payment page for more details.

Chapter I – International application

Filing at an RO

You must file an international application with an RO. As a Canadian national or resident, you may file either at CIPO or at the IB.

When you file, you automatically "designate" all of the 157 PCT contracting states (see Box V of RO/101 (PDF version)). This designation allows you to seek patent protection in those countries at the national level during the national phase.

CIPO as the RO – Information and correspondence details

Canada's PCT filing requirements are outlined in WIPO's PCT Applicant's Guide, Annex C – Receiving Office (CA).

You may file an international application at CIPO if you are a resident or national of Canada. If there are 2 or more applicants, at least one of the applicants must satisfy this requirement.

When filing at CIPO, you must file the application in either English or French. You must pay the transmittal, international filing and search fees within one month of the date that CIPO receives the international application. These fees must be paid in Canadian dollars.

When a PCT international application is filed with Canada as the RO, then Canada will also be the ISA. This will be indicated on the request form (RO/101).

To file the international application with Canada as the RO, please address your applications to the Commissioner of Patents and send the applications by:

a) Electronic filing using ePCT online service and CIPO's PCT e-filing

You can use ePCT to prepare, validate and download an e-filing package to be transmitted to CIPO as the RO. CIPO, as an RO, does not accept direct online filings of international applications through the ePCT online service. Once you have prepared the e-filing package with the ePCT online service, you will need to visit CIPO's PCT e-filing page to submit the e-filing package.

b) Mail or in person
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, room C-114
Gatineau, QC K1A 0C9 (Courier: J8X 3X1)

c) By facsimile
819-953-OPIC (6742)
or
819-953-CIPO (2476)

Notes:

  • Faxes sent to any other number will not be considered received by CIPO.
  • When you send a document by facsimile that also has a fee requirement, you should show your preferred mode of payment clearly on the covering letter. This will help expedite your payment.

International Bureau as the RO – Information and correspondence details

The IB's filing requirements are outlined in WIPO's PCT Applicant's Guide, Annex C – Receiving Office (IB).

An international application may be filed directly with the IB. The IB will act as the RO; however it will not act as an ISA or IPEA.

When filing at the IB, the application may be filed in any one language. However, if the language is not accepted by the ISA, you will have to furnish a translation at that stage.

When a PCT international application is filed with the IB, you will need to indicate an ISA on the request form. If your nationality and residence are Canadian, then only the patent office of Canada will be available to you as an ISA. However, if there are additional applicants having different states of nationality or residence, you will need to choose the ISA.

The IB will receive international applications by:

a) Electronic format – visit WIPO's PCT eServices web page

You can use ePCT to prepare, validate and file a PCT application with the IB as RO. The IB will then transmit it to CIPO in cases where Canada is the ISA. This process is explained in the ePCT user guide and frequently asked questions concerning ePCT, which are available from WIPO's PCT eServices help page.

b) Mail
International Bureau of WIPO
PCT Receiving Office Section
34, chemin des Colombettes
1211 Geneva 20
Switzerland

Filing of nucleotide and amino acid sequence listings forming part of the international application

Regardless of the filing method chosen above, nucleotide and amino acid sequence listings must be provided in WIPO ST.26 XML electronic format and submitted electronically as follows:

WIPO provides an optional desktop tool called "WIPO Sequence" that enables patent applicants to prepare electronic amino acid and nucleotide sequence listings compliant with WIPO Standard ST.26, as part of a national or international patent application. This tool is provided for 3 operating systems: Windows, MacOS and Linux. For further information, please refer to the WIPO Sequence homepage.

Priority claim

Generally, patent applicants who wish to protect their invention in more than one country usually first file a national or regional patent application with their national or regional patent office, and within 12 months from the filing date of that first application (a time limit set in the Paris Convention), they file their international application under the PCT.

The effect of claiming the priority of an earlier patent application is that a patent will not be invalidated by reasons of any acts accomplished during the 12-month interval, such as another filing, the publication or sale of the invention.

If the priority of one or more earlier applications is claimed, the declaration containing the priority claims must be made in the request at filing. The request must indicate the dates on which the earlier applications were filed and the numbers. The filing date of the earliest application whose priority is claimed is the "priority date".

A priority document, i.e. a certified copy of each earlier application the priority of which is claimed, must be submitted by the applicant. The priority document must be submitted to the RO or to the IB before the expiration of 16 months from the earliest priority date or, where an early start of the national phase is requested, not later than at the time such request is made.

Where the earlier application was issued by the national patent office of the RO, you may, instead of submitting the priority document, request the RO to prepare and transmit the priority document to the IB. Where the priority document is available from an office that participates in the WIPO Digital Access Service (DAS) for priority documents, you may use DAS to provide the priority document to the IB.

More information on furnishing your priority documents at CIPO:

RO procedures

Here are the 4 steps involved at the RO level:

  • Step 1
    • The RO receives the international application from you.
  • Step 2
    • The RO checks the international application to determine whether it meets the requirements for form and content of international applications. This check is formal in nature only and does not go into the substance of the invention.
  • Step 3
    • If the international application meets the PCT requirements for giving the application an international filing date, the RO accords the international filing date and international application number.
  • Step 4
    • If the request contains a priority claim, the RO checks whether the priority claim is valid.
  • Step 5
    • CIPO transmits a "record copy" of the international application to the IB, creates and keeps a "search copy" for its role as an ISA once the fees have been paid and keeps one copy as the "home copy".

Chapter I – International search

An ISA identifies, in an ISR, any published documents that may have an influence on whether the invention is patentable, and then summarizes the invention's potential patentability in a WO-ISA.

When Canada is the ISA, Canadian examiners will produce an ISR and a WO-ISA for each international application it receives. The ISR and WO-ISA provide you with an early non-binding opinion on the issues of novelty, inventive step and industrial applicability of the patent application. This allows you to assess, at the search stage, whether to proceed to the national/regional phase.

In accordance with Article 19 of the PCT, after receiving the ISR and WO-ISA, the applicant or inventor can optionally file a one-time claim amendment. This amendment is filed with the IB.

If you do not wish to proceed with Chapter II, the WO-ISA will serve as an IPRP – Chapter I and will be communicated to the designated patent offices in PCT contracting states where you choose to seek patent protection during the national phase, along with application, the ISR and any Article 19 amendments.

Canada's PCT ISA requirements are outlined in WIPO's PCT Applicant's Guide, Annex D – ISA (CA).

Chapter I – International publication

Shortly after 18 months from the earliest priority date of the application, the contents of the international application are published along with the ISR. The WO-ISA is also made available at this time.

Chapter II – International preliminary examination

You should consider filing a demand (IPEA/401 (PDF version)) if you wish to modify your application and receive further examination following the ISR and WO-ISA in Chapter I, or if you do not agree with the opinion provided to you in Chapter I. In accordance with Article 34 of the PCT, during Chapter II, you may submit arguments and/or amend any part of the specification (claims, description, drawings) one or more times. All amendments and arguments will be transmitted directly to the IPEA for analysis.

When Canada is the IPEA, Canadian examiners will produce an IPRP – Chapter II for each international application where the applicant has filed a demand and paid the accompanying fees. Similar to the WO-ISA in Chapter I, the IPRP – Chapter II provides you with an additional preliminary, non-binding opinion on the issues of novelty, inventive step and industrial applicability of the international application. However, in Chapter II, this opinion takes into account the amendments and arguments submitted by the applicant.

When you submit a Chapter II demand, you also automatically "elect" all of the PCT contracting states that you designated at filing. This election allows you to use the results of the Chapter II process in those countries at the national level during the national phase. These are known as "elected" offices.

The IPRP – Chapter II will be communicated to you and the elected patent offices in PCT contracting states where you choose to seek patent protection in the national phase.

Canada's PCT IPEA requirements are outlined in WIPO's WIPO's PCT Applicant's GuidePCT Applicant's Guide, Annex E – IPEA (CA).

PCT international correspondence to CIPO following initial filing

Following initial filing, we encourage you to submit any documents or correspondence related to your PCT international application using our Patents general correspondence form.

You may also submit correspondence by regular mail, in person, Canada Post Xpresspost or facsimile.

We will consider correspondence sent electronically and by facsimile to be received on the day that it is transmitted, if it is delivered and completely received before midnight, local time at CIPO and be accorded that day in office records, irrespective if CIPO is open for business. For any other physical correspondence delivered on a day when CIPO is closed for business, we consider it received on the next day CIPO is open for business.

PCT international correspondence from CIPO

By default, we send all outgoing PCT international correspondence via Canada Post regular post. If you would prefer to receive electronic correspondence via Canada Post epost ConnectTM, you must complete our consent form. (Note that we've verified the accessibility of this PDF.)

National phase

You can now seek patent protection from the national or regional patent offices of any of the contracting states that you designated and/or elected during the application process. In each national or regional office, you must also pay applicable fees and provide any necessary translations.

These designated and/or elected patent offices obtain a copy of the published international application, the ISR and IPRP (Chapter I or II as applicable) as well as any Article 19 or Article 34 amendments from the IB.

It is important to note that in the national phase, any patent office is free to apply its national or regional law to determine patentability. The patent offices will examine the application based on prior art (written disclosure capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step) and any other conditions of patentability that may not have been requirements of the international application during the international phase.

Each PCT contracting state has given WIPO a detailed summary of the requirements for entry into their national phase. However, as practices and rules may change, the only authentic sources of information on requirements are the laws, rules and regulations of each state.

Time limits to enter national phase vary between DO/EOs, but are usually around 30 months from the earliest priority date.

National phase at CIPO

If you choose to seek patent protection in Canada, there are a few requirements that you need to fulfill to successfully enter the national phase at CIPO. You must pay a basic national fee to enter Canada's national phase. Other requirements include providing a translation of the application in either English or French, if the international application was not in English or French and paying maintenance fees.

The time limit for entering Canada's national phase is 30 months from the earliest priority date or if no priority claim was made, from the international filing date (the date on which the application met the requirements under PCT). Should you miss this deadline, you may still enter Canada's national phase if the requirements to enter the national phase are met within 12 months after the 30-month deadline, provided you submit a request that the rights of the applicant be reinstated with respect to that international application, a statement that the failure was unintentional, and the fee for reinstatement of rights (see required fees). Upon national entry, the application is considered a national application and prosecution of the patent application is carried out according to statutory requirements as contained in the Patent Act and Patent Rules. Copies of these legal texts and additional information are available from the CIPO website.

Canada's PCT national phase requirements are outlined in WIPO's PCT Applicant's Guide, National Chapter (CA).

Patent agents

Patent agents have expert knowledge and experience that you can use during the preparation and prosecution of your patent applications during both international and national phases. The College of Patent Agents and Trademarks Agents (CPATA) provides a list of licensed patent agents who can represent you before the Canadian Patent Office.

While all applicants may use the services of a patent agent, and benefit from their experience and knowledge in preparing and prosecuting applications with CIPO, during the national phase where the applicant is not the inventor of the alleged invention, you must appoint a patent agent. There is no such requirement during the international phase.

Once you have appointed a patent agent, CIPO will correspond with the patent agent concerning the prosecution of the application. Only patent agents licensed by the CPATA can conduct business with us.

Summary of links

This list of useful links has been compiled to facilitate the understanding of the international filing system.

Questions during the international phase

Prior to filing, you can contact either WIPO or CIPO with general questions about the PCT system, including how to file an international application and the procedure you need to follow during the international phase.

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