Should you file PCT or US patent application first?
When you need patents in the US and foreign countries, you must eventually file multiple patent applications. The question is which patent application should be filed first. US applicants seeking patents worldwide will often consider filing both a US nonprovisional patent application and an international PCT application. Which application should be filed first? Should both patent applications be filed simultaneously? Let’s consider patent strategies for filing US first, PCT first or both concurrently.
When You Are Unsure: Filing US Patent 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.
When You Want a Granted US Patent ASAP: Filing US App First and Then PCT
Getting the US utility patent granted may be your first and foremost priority. If so, it would make sense to file your US nonprovisional application as soon as possible. Once your nonprovisional application is in line, expect to wait about 1.5 to 2 years for the initial examination.
When You Know You Want Foreign Patents: Filing PCT First and Then US
Filing a PCT application first will give you 30 months from the priority date to file a national stage 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.
Filing a PCT application first will enable you to:
- see prior art search results at approximately 16 months from the filing date; and
- amend claims based on the prior art before entering national stages.
The additional time to make claim amendments in response to prior art references found in the PCT prior art search may save money and time in the long rune. For example, the applicant can 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 get allowed on the first review, the applicant may at least save an Office Action or two.
After Provisional: 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.
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.
After Provisional: Filing PCT First and Then US National Stage
If you have already filed a provisional patent application, one option is to file only the PCT application by the 1-year anniversary. In contrast to the above approach, filing only the PCT application will still keep the door open for you to file a US national phase application by the national stage deadline. You can even file a bypass CIP application in the US if you need to add new matter that was not sufficiently disclosed in the PCT application.
Though this option will keep the door open for obtaining a US patent, it may prolong USPTO examination depending upon when you file the US national stage application.
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.
Have questions about patent filing strategies?
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