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 13 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.

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