Leap of Faith: File a PCT patent application while your US application might get rejected?
Timing your patent filings can be tricky. P:atent applicants typically find themselves in a moment of indecision when the foreign filing deadline approaches. For US applicants, the deadline for filing a PCT patent application is 1 year from your earliest US filing date known as the priority date.
As we delve into that question, keep in mind the alternatives if you don’t file the PCT application.
Timing your Foreign Filing: Wishing you had extra time to make a decision?
In an ideal world, you would wait until the outcome of your US patent application before filing any counterpart foreign applications. Why waste time and money pursuing foreign patent rights if you can’t even get the US patent granted?
The problem is that you do not have the luxury of extra time. In most cases, your foreign filing deadline will be due before your US patent application reaches an outcome. In fact, most US nonprovisional patent applications will not even get an initial examiner review, known as an Office Action, before the 1-year foreign filing deadline. The current wait time for a first Office Action is over 20 months for utility patent applications.
Here is a helpful timeline.
Educated Guess: How will your US claims be amended?
What if I told you that there is a 90% chance your US utility patent application will receive at least one rejection? Not only that, but you might expect up to three Office Actions before getting a patent application allowed, if at all.
The point is that your US patent claims are in a state of flux and will likely be amended before you reach a final conclusion. In fact, your US claims may be amended multiple times over. So the claims that you choose to file in your PCT application may ultimately not be the same claims that you file in your foreign national stage applications.
At the point when you need to make a decision on foreign patent filings, your situation is dynamic and everchanging. The future is uncertain, and the USPTO examiner hasn’t even examined your US application yet. Does it make sense to file a PCT application in light of that uncertainty?
International Patent-Pending: What value do you get now even if foreign patent rights are uncertain?
In essence, filing a PCT application gives you patent-pending status in most foreign countries of commercial interest. What value would that give you even if you don’t ultimately succed in obtaining foreign patents? Would potential licensing deals open up with foreign partners? Would international competitors hold back before copying your technology in foreign markets?
Can a PCT patent application improve your US application’s chances of success?
A PCT application can give you a sneak peek into how your US application will be examined. In many cases, filing a PCT application may result in a prior art search report issued earlier than a first Office Action in your US application. How does that help your US application? Well, that PCT search report will reveal prior art references that will likely be used to reject similar claims in your US application.
By gaining earlier insight into relevant prior art, you can take action now. Promptly file a Preliminary Amendment to amend your US claims in view of the PCT prior art. That will place US claims in in a better condition before the examiner begins reviewing your US application.
Got a Better Idea? What are your options if you do not file a PCT application?
The timing may not be ideal, but what other foreign filing options do you have? They basically boil down to filing direct foreign applications at an even earlier deadline, or not filing foreign at all. Let’s break down these alternatives.
Without a PCT, your foreign filing deadline is 12 months from your priority date (i.e., the same deadline as the PCT). So you would need to shell out thousands of dollars to file individual patent applications in each desired foreign country.
Alternatively, you can forget all about foreign patents. Simply limit your efforts to obtaining a US patent. There is nothing wrong with this decision as long as you won’t regret it later. Once this foreign filing deadline passes, your options for late filings are very limited.