Does our firm recommend PCT patent applications?

If foreign utility patent protection is desired, filing a PCT patent application makes sense for many applicants. Generally, we recommend PCT applications if you:

  • need more time;
  • want to defer legal costs; and/or
  • wish to keep open the option to file in major foreign countries.

Keep in mind that these foreign filing options are all about keeping your earliest US filing date, known as the priority date. If you blow past the foreign filing deadlines discussed here, you still might be able to file in foreign countries. However, such late patent filings will not have the benefit of a priority claim to your earlier filing date. So any prior public disclosures, such as your own US patent publication, might block you from obtaining foreign patents.

When is a PCT application not recommended?

A PCT application might not be the best decision under certain circumstances. For example, suppose you know that you want to file in China only. You do not care about any other foreign countries. You are absolutely certain about this now. More importantly, you don’t think that you will change your mind later.

In this case, you can simply file directly in China by the 1-year foreign filing deadline based on your priority date.

If you are unsure of the countries, then a PCT application may make more sense. Perhaps, your list of desired foreign countries may change in the future. What if you don’t have enough cash to file foreign right now? In any of these scenarios, a PCT application may be helpful.

How does a PCT application buy you more time for foreign utility patent protection?

A PCT application pushes the foreign filing deadline from 12 months to 30 months. Some foreign countries actually have a 31-month deadline. This means that you buy at least an additional 18 months of time before committing to spend on foreign patent filings.

Take a look at the timeline below.

PCT National Phase Timeline
PCT National Phase Timeline

Without a PCT filing, you would have to choose your foreign countries at the 12-month PCT / Foreign Filing Deadline. By filing a PCT patent application, the foreign filing deadline is extended an additional 18 months to the 30-month date known as the PCT National Phase Deadline.

Also known as the national stage deadline, this is the time when you would commit to entering each individual foreign country.

How does a PCT application preserve cashflow by deferring costs?

Instead of having to spend on foreign filings at the 12-month date, you now have an extra 18 months to save up cash. Of course, filing the PCT application itself will incur a cost. Depending upon the size of the application and the selected International Search Authority (ISA), expect the initial filing cost of a PCT to be approximately $4,000.

How does a PCT application keep your foreign options open?

Without a PCT, you must select desired foreign countries by the 12-month deadline. Once that 1-year anniversary passes, all foreign filing options are gone unless a particular foreign country has a grace period.

For example, assume you filed a direct utility patent application in China by the 12-month deadline. Three months later, a potential international business partner inquires about several other foreign countries. Unless a grace period is available, you will not be able to file in those foreign countries and still maintain a priority claim to your earlier US priority date.

We recommend PCT applications because you cannot predict the future. If your business takes an unexpected turn (for the better), would you rather have your foreign patent options open to take advantage of new opportunities?

Need to file a PCT application?

Contact US patent attorney Vic Lin by email or call (949) 223-9623 to find out how we can help you buy more time, keep foreign options open, and preserve cashflow.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com