Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First

By John White
November 22, 2020

“It’s time to board the PCT train. Your clients will like it, you’ll be providing leveraged value and preserving the possibility of patent rights around the world, and you’ll control the timeline in the United States for prosecution for any technology.”

https://depositphotos.com/4284428/stock-photo-high-speed-train-with-motion.htmlI am going to make a bold statement: every non-provisional patent application for an invention originating in the U.S. should be filed via the Patent Cooperation Treaty (PCT) first. Then, after another six months, following the international search, and PCT publication, those who desire U.S. patents should enter the U.S. National Stage. That’s right: every single application, no exceptions. No, I have not lost my mind. Here’s why.

A Secret Society

You may wonder what I am talking about? You cannot see what strategy is executed or left on the table vis-à-vis filing or not filing a PCT application with respect to the United States. Isn’t the PCT just a way to shelve foreign filing for a while, and put off the costs thereof (translations, foreign associate fees, filing fees, etc.) for another 18 months? Yes, that is what it can do, and that is the effect most filers are seeking, but there’s also much more that can be done. It’s okay if all of this is news to you; you and your fellow U.S. practitioners are all similarly informed. You see, PCT practice has been sort of a secret society as its numbers have slowly grown, roughly doubling in the last 10 years. Well, welcome to PCT in the modern age of the Patent Prosecution Highway. Say what? What does PPH have to do with PCT? After all, it only has an effect on in-bound National Stage filings, right? Exactly!

You see, when you file a regular U.S. non-provisional application, you pay fees for filing, searching, and examination. (About $1,820, large entity). And, then, you wait…(tick-tock, tick-tock)…until such time, in the fullness thereof, that the USPTO sees fit to begin the examination. In some technical fields, this can be years. You have your staff check the USPTO office action calculator, check Private and Public PAIR to see if an examiner has been assigned, etc., and keep your clients informed and try and manage expectations. But, suppose you could control that timeline – across all technologies – what then? Well you’d have a happier, more engaged client, and you would get better results, i.e., fewer actions and more allowances, faster. Here’s how.

It’s All In the Numbers

When a PCT is filed, typically at 12 months past your provisional filing date, you pay some fees. These are: a transmittal fee of $260, a search fee of $2,160 (for the United States anyway; others are less expensive, sometimes considerably less), and a filing fee of $1,229 (an odd number because of the Swiss Franc Conversion). Essentially, you’re out about $3,500 or so in fees to file a PCT. What do these fees get: a search, a preliminary report on patentability and a publication. The search occurs quite quickly, i.e., before the 18-month publication. Here’s the kicker, if the search is positive, i.e., it indicates that the claimed invention has novelty, inventive step (i.e., is nonobvious), and has industrial applicability (that is, passes muster under our 35 USC 112(a)) as to at least one claim, it is eligible for PPH treatment upon entry into the National Stage. Thus, now enter National Stage, pay the usual U.S. filing fees (large, small, micro entity), and jump to the head of the line and have your examination now begin, no waiting. This is all occurring within two years of filing your provisional(!); you have initiated examination on the non-provisional, and you’ve saved the $4,200 Track-1 Prioritized Examination fee. But, not so fast, you did spend $3,500 or so to file the PCT—however, that can be cut down another $1,000 or so if a search entity other than the United States or European Patent Office (EPO) is chosen and, if filed directly in Geneva, using ePCT, you can save some of the transmittal fee. So, that $3,500 can be reduced to $2,200 or so, only $400 more than a regular U.S. non-provisional filing. Regardless, you’ve procured a search, you’ve controlled the timeline in the United States, and you’ve preserved the possibility of further filings in 153 PCT-member countries around the world for another 18 months past the lapse of your provisional. Most clients would be thrilled to pursue this route, if they knew the consequences.

But wait, there’s more (in the Ginsu Knife tradition)! If you want to proceed to PCT Chapter II (a $600 cost), and the United States was your chosen searching authority in the above strategy, and all claims are considered to have novelty, inventive step, and industrial applicability, your National Stage fees for examination ($800) and search ($700), are zero. That’s not a typo: zero. All you pay is a National Filing Fee of $330 and you are eligible for PPH. So, spend $640 to save $1,500 and get prioritized examination to boot. Pretty cool. Note: Before the Chapter II examination begins you make amendments (Article 34), in light of the results of the prior international search, so you can assure this outcome for the claims. (Look for another upcoming article on going PCT first—it makes the above timeline even faster!)

Train Your Staff to Drive the PCT Train

But none of this is going to happen without thoughtfulness on your part and training on the part of your support staff. Part of the reason for the secret society type pursuit of PCT has been that everyone has heard it is difficult, mistakes can be made, and awful liability can attach. All true. But, with the new ePCT system rolled out by the Word Intellectual Property Organization (WIPO), it is as easy, if used regularly, as the U.S.-based EFS system. In some ways, in fact, it is better, especially in keeping track of a large docket.

So, time to board the PCT train. Your clients will like it, you’ll be providing leveraged value and preserving the possibility of patent rights around the world, and you’ll control the timeline in the United States for prosecution for any technology. Level that timeline playing field and eliminate “luck of the draw” waiting! The additional cost on the low end is about $2,200 for a large entity—far less than the $4,200 prioritized exam fee (plus no annual 10,000 application filing cap like there is for Track 1 examination).

Join the author and IPWatchdog President and CEO, Gene Quinn, for a webinar on December 2 to learn more about best PCT practices.

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The Author

John White

John White John White is a US patent attorney and a patent lecturer. He is CEO/Managing Director of www.PCTLearningCenter.org, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created in 1995. By now, John has personally taught close to 65% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in patent litigations and is regarded as a leading authority on patent practice and procedure. He also maintains a select patent practice, Berenato & White, and also assists start-up technology companies increase and monetize their patent portfolios through his affiliation with SorynIPGroup.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 30 Comments comments. Join the discussion.

  1. Louis H Iselin November 22, 2020 12:42 pm

    PCT has some weird quirks. Will those be discussed during the December 2nd webinar?

  2. MaxDrei November 22, 2020 4:38 pm

    Mr White, did I miss something in your write-up. I mean, when you file PCT, the WO publication emerges 6 months later (assuming you file PCT 12 months after your initial US filing). That WO A publication is an announcement to the world that you are on track to secure patent rights world-wide, in pretty much ever country in the world. That’s a huge footprint. It’s like purchasing an option, redeemable over the next 18 months following WO publication, for you or your Purchaser/Assignee/Licensee, to patent world-wide.

    That’s quite some property that you can sell or license. Which is worth more, a pending US patent application or a pending application to secure exclusive rights in pretty much every country in the world. How much Big Up potential does that offer you?

    File PCT. Donald Trump surely would.

  3. Mark Summerfield November 23, 2020 5:11 am

    @MaxDrei you are absolutely right. If the applicant is ONLY interested in US rights, then they are making a trade-off between the benefits outlined in this article, and the potential advantages of non-publication. But, honestly, given that non-publication is not an option for most applicants globally, is this really such a big issue? And you do get a look at preliminary search results before publication, so it’s not as if you don’t have the option of withdrawing the application if the prospects of obtaining a patent are not looking great.

    It’s interesting. I have been looking at filing patterns in Australia and New Zealand. You might think that use of the PCT route would have stabilised for countries that have been members for decades. But, in fact, filings via the PCT have been growing in recent years across a number of countries of origin. Growth in use of the PCT system is partly driven by China, but applicants from other countries are also increasingly choosing to “board the PCT train”!

  4. Chris Norman November 23, 2020 5:24 am

    I have a question regarding priority. If you use this path for a continuation patent does it still hold the first to file date back to your provisional worldwide? Say you filed in 2010. Now file a continuation in 2021. Does world wide coverage agree to go back to 2010 for the priority date?

  5. Peter Kramer November 23, 2020 7:22 am

    One advantage of filing PCT first is then after national stage application is filed, unity of invention rules are applied rather than the US restriction rules which are very often abused.

  6. MaxDrei November 23, 2020 7:54 am

    Mark, could it be that the AIA explains the upsurge of interest in filing PCT if you are not American?

    I mean, your WO publication will serve as the basis of an obviousness objection in the USPTO, to your American competitor’s USPTO filing, and your WO-PCT prior art is (under the AIA) backdated to your priority date. So, if you filed yours at the AU PTO one day before your US competitor filed their pro at the USPTO, your filing will serve as an obviousness objection to theirs at the USPTO.

    And the wonder of it all is, you don’t even have to enter the national phase. Publication of the WO is all you need. Isn’t that magical?

    I’m sure industry in China know all about this. And now the rest of the world is catching up, it seems.

  7. Anon November 23, 2020 8:07 am

    The situation (as typical) is not nearly as ‘clean’ and uncomplicated as may seem at first blush.

    PAST ‘growth’ of PCT filings may well have been a tactical ploy, akin to poisoning the well for later (other) filers, while China saw themselves in a ‘ramp-up-yet-not-quite-ready-to-be-serious’ mode (going the PCT route with NO real view to actually prosecute filings INTO granted patents).

    Of course, that was a transitional stage, of which China has continued to show its evolution (including making its innovation protection laws MORE robust, even as the innovation protection laws of the US become less so).

    Still and all, there remains a bit of a misnomer with the undertones here: there is no “One World Patent” and the PCT is merely a pathway to the applicant to choose any many — or as few — countries within which to seek actual protection (at varying cost/benefit business analysis results as may be chosen).

  8. David Boundy November 23, 2020 8:22 am

    Dear John —

    There are a couple additional tradeoffs that you don’t discuss (this is a blog post, not a treatise, so I’m not expecting an exhaustive treatment of all issues!). These are genuine questions, I don’t use the PCT enough to have opinions on these. Are they worth a follow-up article?

    How does patent term adjustment work? Term adjustment doesn’t accrue during international phase, correct?

    What happens if you don’t get a favorable PCT IPER? Suppose you’re after a maximum-scope patent, so you’re going to want to force the real claims you are really entitled to, without the bogus “just to get something allowed” limitations we often add for lower-value applications. What happens to a PCT application in that case?

    If claims are narrowed during PCT international phase, can the claims be broadened again in “narrowing only” jurisdictions like Europe?

    Are you advocating PCT-only, as an “instead of“? When would you file “in addition,” two applications (PCT and U.S.) in parallel?

    Thanks

  9. John White November 23, 2020 9:07 am

    David: not to worry! More PCT articles to come. Think PCT! As to patent term, it ends 20 years from your IA filing date, in the same way it ends 20 years from your nonprovisional date. No PTA is accrued during the International Phase, hence the early jump into National Stage post search. As to what the consequences of a negative search, do Chapter II and fix it up! As to narrowness, that is a strategic choice, but also lengthens the fight and delays the onset of coverage, wherever you’re headed. Thanks for comments.

  10. Greg Magel November 23, 2020 11:27 am

    Hi, John.
    Another additional request…when/if you revisit this post in response to other commments, could you add typical costs for Small Entities to compare with the costs you already provided for Large Entities?
    — Greg Magel

  11. Anon November 23, 2020 1:21 pm

    Perhaps a (small) speck of rain in the otherwise sunny picture: entities that know that they only want US protection should understand closely the possible forfeiture of conducting examination under non-publication.

    Unlike the rest of the world, the (original) US Quid Pro Quo was actual patent rights in exchange for publication, as opposed to a “right to be examined” for sharing the publication knowledge with the rest of the world.

  12. Curtis Birnbach November 23, 2020 3:48 pm

    @maxdrel. You are so right. If preservating confidentiality is important, don’t do this. International filing is bad enough. There is no control over who see your work at international agents. You might as well send your work directly to the foreign intelligence agencies dirrctly

  13. Mark Summerfield November 23, 2020 5:56 pm

    @MaxDrei That’s an interesting thought. To be honest, I wasn’t aware that the AIA had eliminated the requirement to enter the national phase in the US before a PCT application (designating the US) is considered ‘an application for patent deemed published under 35 U.S.C. 122(b)’, so I thank you for drawing this to my attention. (On the other hand, this has always been the position in Australia, although an unpublished application with earlier priority is available for novelty purposes only, as in Europe.)

    I suspect, however, that this is far too subtle a strategy to be driving the growing preference for PCT-based filings in Australia. And many of these applications originate in the US, which remains, by a significant margin, the largest source of new Australian patent applications.

  14. MaxDrei November 24, 2020 4:57 am

    Mark, I thank you. I had no idea that (even if only for novelty attacks) that a WO publication which never entered its national phase is nevertheless prior art in Australia, not as of its date of WO publication but, rather, backdated to its earliest priority date. I had supposed that the AIA was alone, in that regard, all other countries recognising the backdating only after entry of the prior PCT filing into the relevant national phase Office.

    Are there other countries that do it, in addition to AU and US, I wonder..

  15. AAA JJ November 24, 2020 9:29 am

    Filing a PCT application in the US as the receiving office and selecting the USPTO as the ISA is a complete waste of money. The search is done by contractors and the U.S. examiners who examine your 371 or bypass CON don’t give the search results any credit. It’s better to pay the extra fees and have the EPO as the ISA. Their examiners are professionals and know how to search.

  16. IamI November 26, 2020 1:02 pm

    I was just coming here to say something similar to AAA JJ. The USPTO performed Chapter I searches are all done by contractors and are uniformly terrible (it’s a reject at all costs mentality on most search reports I see). I think the Korean results are generally not good either (I’m shocked if they ever turn up anything that isn’t an A reference). The EPO typically finds the best art at that level but the application of it can be wonky (lots of stretching of references and 1-reference inventive step rejections where anything the art doesn’t teach is considered to lack inventive step with no reason given other than skilled artisan handwaving).

  17. MaxDrei November 26, 2020 2:29 pm

    Iami, from Europe, I baulk at your description of EPO reasoning as “wonky”. Think of it like this. You are in court, as a witness, being cross-examined by a trial lawyer who starts with “Iami, I put it to you that….. What do you say in reply?”

    In short, the “wonky” reasoning is a great opportunity to explain in reply, why the claimed subject matter is NOT obvious. At least, that is how I see it, as a European patent attorney.

    These things are increasingly important, now that the EPO is getting its opinions on patentability out earlier than the USPTO can manage.

  18. IamI November 26, 2020 10:21 pm

    It doesn’t do any applicant any good for an EPO examiner to say something lacks inventive step by simply saying so without any evidence. Which is what a lot of 1-reference lack of inventive step rejections out of the EPO appear to be, especially at the PCT level.

  19. Mark Summerfield November 26, 2020 11:52 pm

    @IamI and @MaxDrei, I’m not sure that there’s much to be gained from debating the basis for objections raised by different Search Authorities at the Written Opinion stage. The PCT supposedly sets out the applicable rules for inventive step (largely modeled on the European approach). In practice, however, examiners tend to apply the methods with which they are most familiar. An inventive step objection from the EPO thus looks very much like an EPO inventive step objection, where the examiners are trained to consider themselves as the Person Skilled in the Art (PSA). This is essentially license to turn the onus back on the applicant to rebut the examiner’s assertion of obviousness. In my experience, they are generally pretty reasonable about withdrawing objections in the face of sound arguments (and evidence, where available).

    It is, however, a bit of a mystery to me why anybody would be greatly concerned about objections raised in a PCT Written Opinion. I am even more perplexed as to why anyone spends money and effort on International Preliminary Examination. My view is that you hope for a good-quality search (which you will normally get from the EPO, if that option is available to you). You can then form your own views on the consequences of any new art uncovered for the patentability of your invention in various jurisdictions that may be of interest to you.

    Obviousness – in both theory and practice – is simply not the same in the US, Europe, Japan, and Australia (to give just a handful of examples with which I am most familiar). And if you want to amend, then what you will be permitted to do in, say, the US, will be quite different from in Europe. In my opinion, there is no ‘one size fits all’ approach that would justify proceeding through IPE. The only remotely valid reason I can think of is where there is some commercial benefit to a company in obtaining a clear IPER.

    So who really cares what the Written Opinion says, so long as the search results are informative?

  20. ipguy November 27, 2020 12:06 am

    @15, 16
    Totally agree that the USPTO ISA outsourced prior art search results are worthless. The contractor definitely has a “reject at all cost” mentality when it comes to the PCT search (that same contractor does a much better job if you hire them directly to do a prior art search). Perhaps it has something to do with whatever “performance metric” the USPTO uses to review the contractor’s work. While slightly cheaper, Korea ISA search results are also lacking in quality and that’s why I only used them a few times before I decided it was better to stick with the USPTO as ISA. For reasons of cost, I only use the EPO as the ISA when the client is a large entity.

  21. MaxDrei November 27, 2020 5:34 am

    Mark, you can imagine:

    “some commercial benefit to a company in obtaining a clear IPER”

    So can I, especially when that IPER is written by the EPO, because I think it is a positive influence on prosecution in the national phase, and not only in Europe.

    Conversely, a positive IPER out of the USPTO carries little influence elsewhere, first because the search is not up to snuff and second because obviousness in the USA is so different from the rest of the world.

    Do you see it like that too? or not?

    IPGuy, thanks for that comment. Given the high cost of going forward into the national phase, is there not a good argument to be made, that the high cost of using the EPO as ISA is justified by the possibility that its search report will reveal that there is no point in throwing good money after bad, by marching further on, into the ever more expensive national phase?

  22. ipguy November 28, 2020 2:20 pm

    @21
    “is there not a good argument to be made, that the high cost of using the EPO as ISA is justified by the possibility that its search report will reveal that there is no point in throwing good money after bad”

    “possibility” vs. “actual higher cost of EPO as ISA”

    It’s a good theoretical argument but, in reality, clients watch every nickel ($0.05) and dime ($0.10), Max. In my experience, clients look at the actual cost savings in front of them rather than the potential for cost savings down the road.

    Max, even if you go with EPO as the ISA, can you guarantee your clients that the Examiner will not find other, better art during the course of prosecution? I can’t make that guarantee to my clients.

  23. IamI November 28, 2020 4:41 pm

    ipguy, Max can’t make that guarantee. I know because I can find better art than the EPO examiner has at the PCT stage. Plenty of times I have to because of that “Person Skilled in the Art” inventive step analysis that Mark helpfully pointed out above that EPO examiners use.

    Don’t get me wrong. There are plenty of times that art cited by the EPO is applicable. But, other times it’s truly a hard pass.

  24. MaxDrei November 29, 2020 5:27 am

    Replying to #22 and #23. My opinion, based on my experience:

    1. If the EPO is the ISA it does not search again in the EPO national phase. The ISR is its search, done and dusted. If you get from the EPO, acting as ISA, a positive opinion on patentability, you are well on your way to grant in Europe (the 38 Member States of the EPC). And grant in Europe will help you towards grant, everywhere in the world more easterly than Europe. But:
    2. Obviousness in the USA and obviousness in Europe is reasoned so utterly differently that success in one jurisdiction is no guide to success in the other.

  25. ipguy November 29, 2020 12:47 pm

    @24
    So you’re saying that EPO Examiners never do an updated search during prosecution?

  26. MaxDrei November 29, 2020 5:18 pm

    What I’m saying is that at the EPO, for historical reasons, the act of searching is separate from the act of examining on the merits. The case goes through the search and then, but ONLY if Applicant pays the examination fee, on to examination. Examiners reckon on not stepping back to do more searching. They are under the cosh to deliver ever greater productivity.
    So, instead, what they do is to issue you with an Office Action in which they tell you that the claim amendment you are proposing is to subject matter which has not been searched and so is not admissible. See EPC Rule 137(5). That takes far less time than doing another search. If Applicant doesn’t like it, they can file a divisional.

    I’m also saying that patentability under the PCT is in substance identical to patentability under the EPC so, once the EPO has reached an opinion on patentability under the PCT, there’s nothing more in the way of patentability checks that needs to be done in the national phase at the EPO.

    https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/r137.html

    Questions?

  27. Anon November 30, 2020 8:30 am

    MaxDrei,

    It appears that you skirt the issue that ipguy wants to focus on.

    It is well known that in the US, prosecution is most often an iterative process.

    A ‘first pass’ and ONLY ‘first pass’ prior art search would then appear to be a rather serious deficiency. That you appear to want to make this deficiency to be some sort of systemic limitation is NOT a plus.

    The ‘just file a divisional’ seems like an awfully ham-fisted approach, seeing as an applicant does not — and cannot — control** the results of any prior art search conducted by a patent office.

    ** I phrase it like this, as I am aware of ‘Best Practices’ to have a client buy in to having the most extensive possible search done prior to drafting, but one MUST keep in mind that any such level of search — importantly including the level of NO search — is (and remains) the prerogative of the client. and (leastwise in the US) there is NO legal requirement for any search to even be conducted. And there are reasons WHY no such search is required.

    Short of actually having search results being a controlled and known entity then, ‘the art’ of specification writing is to have the ability to have one’s initial specification (due to the fact that in ALL Sovereigns, there is a ‘no new matter’ rule). as flexible as possible AT filing and prior to any indication from ANY patent office what the world of prior art MAY look like.

    In other current threads in the blogosphere, I have pushed back against ‘nice-sounding’ platitudes of both yours and Paul Cole’s that reflect the essence of attorneys necessarily operating in the real world, and surprisingly often – for a surprisingly varied array of clients – with express direction against Best Practices.

    This pushback is LESS to be antagonistic, and more simply to be real.

  28. MaxDrei December 1, 2020 3:38 am

    We agree, anon, that one of the skills of drafting is to do so in a way that can accommodate the emergence, after the patent application is filed, of prior art closer than what was known to the drafter at the time of drafting. Switching to a First to File law of patentability puts a higher premium on such skill. I speak from experience.

    The next 20 or 30 years of experience in the courts of the USA, adjudicating priority contests between rival filers, will bring home the point very effectively. Hang on in there long enough, anon, and with the passage of time you’ll see.

  29. Anon December 3, 2020 7:52 am

    Sadly MaxDrei, while I may agree with your propensity towards the value of skill in such drafting, there are FAR MORE WEIGHTY actions afoot in the US patent system.

    One need not weight anywhere near 20 to 30 years to understand that.

  30. ipguy December 5, 2020 8:52 pm

    I just received an EPO Office Action where the Examiner is citing a new reference. After we filed the last reply, he conducted an updated search. My foreign associate describes the Examiner as being “apologetic” for it not having been cited earlier.

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