Is there a PCT strategy that will benefit your US national stage?

The PCT application is more than something to push back deadlines. While the deferral benefits of a PCT application may be more well known, the PCT can be an effective tool to streamline national stage filings. In fact, the PCT application can help reduce costs and timelines of the subsequent nationalizations. This article will provide you with helpful knowledge to develop a PCT strategy that will hopefully benefit your national stages, particularly in the US.

How to get an early PCT prior art search

A prior art search is conducted for every PCT application. Depending upon your PCT filing date, that prior art search report may be issued sooner than an Office Action in a counterpart application. An International Search Report is typically issued around 16 months from the priority date. For example, let’s say your first filing was a priority application filed in your home country outside the US. The filing date of that first filing is your priority date. You then follow up with a PCT application filed within 12 months of the priority date. The patent office that is doing the prior art search will seek to issue a prior art search report within 16 months of the priority date.

Now suppose your first filing was the PCT application filed with the USPTO. In that case, the USPTO will try to issue a search report within 9 months of the PCT filing date. This is significantly earlier than the 16-month average wait time for a first Office Action in a typical US utility nonprovisional patent application.

How can you take advantage of the PCT prior art search?

Though claim amendments are optional, you should take advantage of the opportunity to amend your PCT applications in light of the prior art found in the search report. There are bound to be some claims lacking in novelty (N) or inventive step (IS), which is the equivalent of nonobviousness.

Depending upon the details of the claim rejections, it may make sense to do a simpler amendment under Article 19 without a further search opinion. If more substantive amendments are contemplated, however, an Article 34 amendment under Chapter II (“two”) may be more beneficial in the long term. A Chapter II demand will lead to a second search report that might be more favorable than the first search report known as the ISR.

What PCT strategy makes sense for allowable claims?

If and when you can get your PCT claims in an allowable condition, then consider filing national stage applications with a Patent Prosecution Highway (PPH) request. Not every country has a PPH program (e.g., India). Even those countries that do offer PPH, there is no guarantee that the patent examiner will agree with the prior PCT findings.

Nevertheless, entering national phases with claims containing more allowable subject matter can save at least one rejection. Examiners will be required to search for prior art with respect to your amended claims as opposed to your original PCT claims.

What PCT strategy makes sense for a counterpart US application?

If you have a US nonprovisional application copending with a PCT application, you can take advantage of the PCT search report in your US application. After receiving the PCT search report, you can file a Preliminary Amendment in your US application to amend the US claims prior to examination by the US examiner. If an Office Action is already outstanding, your response can incorporate claim amendments taking into consideration any new prior art uncovered in the PCT search report.

In fact, this strategy would be valid for any copending counterpart applications beyond the US. You can amend claims in your counterpart applications based on PCT search results, preferably prior to examination by the foreign patent offices. In many countries, examination is deferred until the applicant satisfies a second step of requesting examination. By delaying the request for examination in the counterpart applications, an applicant can take advantage of the PCT prior art information to place the counterpart claims in a better condition prior to the examiner’s review.

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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