Q. Can a company having its headquarters in, say, Canada (Canadian company) file an international application under the Patent Cooperation Treaty (PCT) with the US as the receiving office?
A. As a preliminary matter, why would a Canadian company want to file an international application with the US as the receiving office when Canada can serve as a competent receiving office? At the moment, Canada has only one option for the international searching authority (ISA), which is the Canadian patent office. In contrast, the US has eight options for ISA: US Patent and Trademark Office (USPTO), European patent office (EPO), Korean Intellectual Property Office (KIPO), IP Australia (IPAU), Russian Federal Service for Intellectual Property (Rospatent), Israel Patent Office (ILPO), Japan Patent Office (JPO), and Intellectual Property Office of Singapore (IPOS). For the sheer amount of ISAs to choose from, the US as the receiving office is an attractive choice. The applicant can choose an ISA based on thoroughness of search, cost of search, or market of interest.
According to PCT Article 9(1), any resident or national of a Contracting State may file an international application. PCT Rule 19.1(a) stipulates that the international application may be filed at (i) the national Office of or acting for the Contracting State of which the applicant is resident, or (ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or (iii) irrespective of the Contracting State of which the applicant is a resident or national, with the international bureau (IB).
Based on PCT Rule 18.1, the Canadian company, being constituted according to the national law of Canada, will be considered to be a national of Canada.
Under option (ii) of PCT Rule 19.1(a), the Canadian company can file an international application with Canada as the receiving office. The ISA will be the Canadian patent office (CIPO).
Under option (iii) of PCT Rule 19.1(a), the Canadian company can file an international application with the IB. The ISA will be determined based on the Contracting State, which is the same as the nationality or country of residence of the applicant.
The Canadian company can file an international application with any Contracting State that it is a resident of under option (i) of PCT Rule 19.1(a). This is possible especially in the case of a Canadian company since Canada is not neurotic about foreign filing licenses. In most cases, Canada does not require a foreign filing license before a patent application can be filed abroad.
However, what does it mean for an applicant to be a resident of a State? PCT Rule 18.1(i) considers possession of a real and effective industrial or commercial establishment in a Contracting State as sufficient condition for being a resident of the State. In this case, if the Canadian company has a real and effective industrial or commercial establishment in the US, the Canadian company would qualify as a resident of the US.
Based on PCT Rule 19(a)(i), the Canadian company could file an international application with the US as the receiving office if the Canadian company is also a resident of the US. Or, if the Canadian company chooses to file the international application with the IB and claims US residency, the Canadian company may access the ISAs available with the US as the Contracting State.
How will selecting the US as the receiving office (or Contracting State) affect the PCT request form for the Canadian company applicant? In the PCT request, the country of the address indicated for the applicant will be regarded as the applicant’s State of residence if no State of residence is further indicated in the designated area. Thus it seems that it would be possible to indicate the applicant’s address as the Canadian address and still indicate the State of residence as the US (a statement of US residency may be included in the request, if there is an opportunity to add any extra information to the request). Typically, an address for correspondence can be indicated separately from the applicant’s address, and it may make sense to use a US address for the correspondence address since the USPTO may choose to send some communication by physical mail. However, the applicant can also indicate that all communication should be exclusively in electronic form.
WARNING: This is a theoretical answer.