SHOULD I CONSIDER FILING A PCT APPLICATION
- An inventor or small business should base a decision to file a PCT
on more than simply a desire to have coverage in as many nations as
- Perhaps most importantly, the inventor should be aware that foreign
patent protection can be a very expensive proposition and the
costs can quickly escalate well beyond the ability of most small
businesses to pay. U.S. patent protection is typically a
fraction of the cost of foreign patent protection. Costs are
explained on another page: pctcosts.html.
- A PCT application should NOT be filed if a public disclosure
or attempted sale of the invention is made before the first filing of
a patent application. Public disclosure of information about an
invention up to a year prior to filing a U.S. patent application is
permitted in the United States, but it can invalidate an applicant’s
right to patent protection in many foreign jurisdictions.
See the italicized "Note" at: What disqualifies you from obtaining a patent.
- One can claim priority back to an earlier application's filing date
if the PCT application is filed within a year of the earlier
So, one must have filed the earlier application before the public
disclosure and within a year of the PCT application. The earlier
application's filing date is then the "priority date" for
the PCT application. If no prior application is involved the
"priority date" is the filing date of the PCT application.
- Beware: You do not get a second year for filing a PCT
application within a year of a nonprovisional application that claims
the benefit of a provisional application.
For example, suppose a provisional application is filed, then about a
year later a U.S. nonprovisional application is filed. The
nonprovisional properly claims the benefit of the earlier-filed
provisional application. In that circumstance, one does not get
another year to file a PCT application claiming the benefit of the
One may not claim the benefit of the nonprovisional application and
ignore the filing date of the provisional application. The Paris
Convention (Article 4(C)(4)) prevents an inventor from claiming the
benefit of the second application where the first application (the
provisional) was pending at the time the second application was filed.
A public disclosure before an application's filing date can often
disqualify one for a non-U.S. patent. See the italicized
"Note" at: What disqualifies you from obtaining a patent.
- Oftentimes, a small business simply wants to keep options open,
assuming a sale or licensing of the invention can be negotiated with a
deep-pockets investor. So, an initial filing of a U.S.
application (either a provisional or a non-provisional), and then
within a year, a PCT application is filed claiming the earlier filing
date as the priority date for its invention. This gives the
inventor up to 18 months to make a decision on where to file national
stage applications. This option can cost about $3,800 in excess
of simply filing a U.S. application. See PCT Costs for more information.
PCT FILING STRATEGY FOR U.S. RESIDENTS
- Some strategy on designating the International Search Authority
might save money, but could pose other intangible problems. The
International Search Authority is the patent office that does the
first preliminary look at patentability during the international
stage. The U.S. and the European
Patent Office have high search fees: $2,080 for the
U.S. (eff. 01-APR-2010) and $2,485 for the EPO. Currently, the Korean
Intellectual Property Office search fee is $1,397.00.
- An unstated and difficult to prove problem in selecting an
International Search Authority in a country that is not your primary
market for your invention, is that the country that is your intended
primary market will tend to discount the search that was done and give
your application more scrutiny during the national stage.
- Also, the EPO will not act as an International Search Authority or
International Preliminary Examination Authority for applications with
one or more claims to a business method, and the Australian Patent
Office will not serve these functions for applications with one or
more claims drawn to mechanical engineering or analogous fields of
technology as defined by certain International Patent Classification
- Filing a PCT application first (before any other application) can
defer Patent Office consideration of the application by up to 30
months. Since a patent runs for 20 years from the application date,
i.e., for this case from the PCT filing date, this is generally not of
value to many inventors.
- Note that a foreign filing license may be required to file a
PCT application with the International Bureau or with a foreign filing
When to File in the National Stage. If you get
to the national stage of the PCT process and are faced with a decision as
to where to file national stage applications, you probably should consider
several factors. First and foremost, filing national stage patent
applications is a business decision.
- This business decision should be guided by several factors,
including where the markets for your products are located, where your
products could be marketed in the future, where you products
are manufactured today, where your products could be
manufactured in the future, where your competitors are
manufacturing and marketing their products, and the total you have to
invest in patent protection.
- If several countries are involved, an initial PCT application might
be filed with the expectation that the national stage (30 months from
the priority date) will be highly selective towards key states where
one might expect to sell or manufacture, as well as possibly import,
distribute, use, or transport their invention. When competitors
are known, protection only in countries where competitors are located
can be effective worldwide patent coverage because manufacturing or
sale of the invention has been covered.
- Decisions on the states to cover during the national
stage (30 months after the priority date) should also be made with
due regard for the actual protection afforded by foreign patent laws
and systems. Small businesses should target countries that offer
appropriate patent protection and meaningful enforcement. The United
States Trade Representative (USTR) has identified a "Priority
Watch List" and "Watch List" of countries
that exhibit "particular problems." The Priority
Watch List includes Algeria, Argentina, Chile, China, India, Indonesia,
Pakistan, Russia, Thailand, and Venezuela. This
report plus additional info on other countries is on the USTR web site , which identifies countries that deny adequate and
effective protection for intellectual property rights, or deny fair
and equitable market access for persons that rely on intellectual
Bottom Line and Note of Caution. The ultimate selection as to where to
seek patent protection is as much a strategic question as it is a cost and
motivational question. With the PCT one can keep options
open. The PCT process can postpone the final decision as to what
nations patent protection will be sought as well as defer to the latest
possible time decisions as to how high the cost can be shouldered to
obtain and then enforce the patent.
PCT EXPLANATION BREAKOUT
LAYOUT. The PCT is a complex subject are that
requires more than one page of explanation. The PCT discussion is on
5 web pages:
--- explains what the PCT process is and some reasons for filing.
--- explains how the PCT process works. You are on this page
--- explains potential PCT filing strategies to consider. You
are on this page now.
--- explains the U.S. National Stage of the PCT process.
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This file last modified 06/01/13.
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