Should you file PCT or US patent application first?
US applicants seeking patents worldwide will often consider filing both a US nonprovisional patent application and international PCT application. The questions is: Which application should be filed first, or should both patent applications be filed simultaneously? Let’s consider patent strategies for filing US first, PCT first or both concurrenlty.
Filing US first and then PCT
It may make sense to file first in the US if you are not yet sure about international patent protection. Some IP owners know for sure that they want a US utility patent, but have not yet made a decision on foreign patents. Filing your patent application first in the US will give you one year to decide on foreign filings assuming there are no priority claims to any earlier patent filings.
Filing first in the US will not necessarily give you an advantage in obtaining an earlier allowance of claims. The USPTO still has a long backlog of utility nonprovisional applications to review although the average wait time for the first review has shortened in recent years. It is likely that you may approach the national stage deadline in your PCT application without any allowed claims in your counterpart US application.
Filing PCT first and then US
Filing a PCT application first will give you 30 months from the priority date to file a related application in the US as well as any PCT member countries. Whereas filing a US application first gives you 12 months to file a PCT application, filing a PCT application first gives you 30 months to file a US application. Therefore, going first with the PCT gives you 18 more months to do the following before entering the US national stage:
- see prior art searches; and
- amend claims
The additional time to make claim amendments in response to prior art references found in the PCT prior art search(es) will enable the applicant to place the US application in a better condition for allowance when it comes time to file US national stage application. Even if the US claims do not receive a “first action allowance” (i.e., first examiner review leading to allowance without any rejections), the applicant may at least save an Office Action or two.
Filing PCT and US applications concurrently
There may be circumstances warranting the simultaneous filing of both a US and an international application. For example, if a provisional patent application was filed almost a year ago, the applicant may opt to file both the US and international filings by the 1-year deadline. Even with a priority claim to a provisional, the applicant would still have the option to file the PCT first and reserve the right to file the nonprovisional in the US later as a national stage filing.
Filing both applications concurrently enables the examination of the US application to begin sooner. More specifically, you keep your earlier place in line at the USPTO which may still be a 15-month wait to the first review by the patent examiner. Meanwhile, an International Search Report may be issued in your PCT application which will how the claims are allowable or rejected over key prior art references. You can use what you learn from the PCT prior art search to make potential amendments to the US claims prior to the examiner issuing a first Office Action.
US and foreign patent strategies
Timing and costs are key factors in deciding which patent application to file first. Going first with the PCT may delay the examination of the US application, but could provide greater clarity for claim amendments in the meantime. Filing a US application first can preserve cash flow, especially if you are not sure about seeking international patent protection.
Filing both at the same time gives you the benefit of a prior art search in the PCT application while your US application is awaiting review. If the review of your US application is delayed, which is fairly common, you may have opportunities to file claim amendments prior to the first Office Action based on clues given in your PCT application.
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