How many PCT Applications are filed by US applicants?
In 2023, over 55,000 international PCT applications were filed by applicants from the US. Which PCT foreign countries were popular with US applicants?
Need to file national stage applications in PCT foreign countries? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore working with us.
Can a US-originated PCT application be filed as a US national stage application?
Yes, PCT applications filed by US applicants can be used to file US national stage applications except in one rare scenario. Make sure the PCT application is filed before the counterpart US nonprovisional is granted.
The deadline for filing a PCT application is one year from the priority date. In certain rare situations, your US nonprovisional application may become a granted utility patent before the one-year foreign filing deadline.
For example, expedited examination of a US nonprovisional utility application may occur due to a Track One request or a petition to make special based on inventor age. When you speed up a US utility patent, you need to make sure to file your PCT application before the US patent is granted if you want to reserve the option to file a US national stage application. Otherwise, the required pendency to a US application under Section 120 may be lost.
Filing a PCT application after the counterpart US patent is granted may still enable foreign national stage applications if the PCT application is filed within one year of the priority date.
What are the top PCT foreign countries selected by US patent applicants?
Excluding US national stage applications, here are the top 10 PCT foreign countries for national stage applications filed by US applicants (ranked in order based on 2023 data):
- European Patent Office (EPO)
- China
- Japan
- S. Korea
- Canada
- India
- Australia
- Brazil
- Mexico
- Israel
Which countries should you pick for your PCT national stage applications?
Remember that a patent gives the owner the right to exclude others from doing certain activities. In most countries, the blocked activities include making, selling or using the patented invention.
Therefore, PCT applicants should carefully consider the foreign countries in which substantial manufacturing, selling and/or usage may occur. Here are some practical questions:
- Where are the makers of the product or technology located?
- Who are the sellers located?
- Who are the customers (users) located?
What are important considerations for choosing PCT national stage countries?
Costs can start to add up. You have not only the initial filing cost of a national stage application, but also the costs of ongoing patent prosecution in each selected foreign country. Here are some prudent questions to ask:
- Can you afford the ongoing patent prosecution costs in your desired PCT foreign countries?
- Is there a potential business partner who can help pay costs for certain PCT foreign countries?
- Can you license your patent-pending technology to business partners in your desired foreign countries?
- Would filing in particular countries (e.g., where manufacture occurs) practically block potential international sales by competitors?
