PCT Receiving Office (RO): When a PCT application cannot be filed with the USPTO

What is a PCT Receiving Office (RO)?

In order to file a PCT application, a Receiving Office (RO) must be selected. For most US practitioners, the default is to select the US as the Receiving Office due to the familiarity of electronically filing patent applications with the USPTO. There’s just one problem. The USPTO cannot serve as the PCT Receiving Office if none of the applicants are US nationals or residents.

How to Choose the Right PCT Receiving Office If No Applicant Is A US National or Resident

If none of the applicants are US nationals or residents, a PCT application can be filed with the International Bureau (IB). Why does this matter?

First, the cost of the PCT application will vary. If the IB is the Receiving Office, then the available options for the International Search Authority (ISA) will depend upon the nationality of the applicant(s). For example, having the European Patent Office (EPO) as the International Search Authority will be more expensive than using the USPTO as the ISA.

Second, a tricky situation can arise when the invention was made in the US, but the applicant is a foreign company as discussed below.

How to File a PCT Application When Invention Was Made In USA

Any invention made in the US must first be given a foreign filing license before a patent application can be filed in a foreign country. A dilemma arises when a US-made invention is owned by a foreign applicant.

In this situation, a PCT application cannot be filed with the USPTO as the Receiving Office. If you try to file the PCT application with the IB, a foreign filing license must first be granted by the US government.

What is the solution? Before filing the PCT application, file a US provisional or nonprovisional application. In most cases, the USPTO will grant a foreign filing license for the US utility patent application. That foreign filing license will also give permission to the applicant to file subsequent applications, namely, the PCT application, as long as the subsequent application does not change the general nature of the invention.

What is the scope of a foreign filing license?

A foreign filing license will cover subsequent modifications, amendments, and supplements containing additional subject matter except for one situation. If such changes would require the subsequent applciation to be made available for inspeciton pursuant to secrecy concerns under 35 USC 181, then the original foreign filing license would not apply to such changes.

So the takeaway here is to avoid adding any top secret stuff to a prior US application for which a foreign filing license has already been granted.

Need help with filing a PCT application or determining the right RO and ISA?

Feel free to contact US patent attorney Vic Lin by email or call (949) 223-9623. We can help you determine the right Receiving Office and ISA for your PCT application, and provide flat rate quotes for filing your international patent application.

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