A PCT application does not grant any rights. It allows the applicant the right to continue international filings. This is very complicated but that’s not unusual, most patent law issues are complicated. You can look at a PCT application as buying the option to continue international filing, which comes at a cost. The cheapest PCT filing fees I have seen in the last several years are $3,500. That only covers the government fees, not attorney fees. What does this get you?
First let's discuss international filing without a PCT application. Most countries allow an applicant to claim priority back to a U.S. first filed application. This can be either a non-provisional application or a provisional application . The deadline for international filing is generally one year from the earliest priority date. This means that if an applicant filed a provisional application on July 1st of one year, then a non-provisional application in June of the following year, the international filing is due at basically the same time as the non-provisional application was filed - July 1st. This can create budgeting issues. Keep an eye on that.
A PCT application can be filed instead filing to individual countries or regions (like Japan, Korea, China, EPO etc.). The deadline for filing in the individual countries (the national phase) gets pushed out to 30 months from the earliest filing date. If you knew ahead of time which countries you plan to file in, the money spent on the PCT would be better used to file in the individual countries. The PCT is useful when there is not a budget for filing internationally. If nothing is going to change in the next 18 months, either with product sales, or investor input, then skip the PCT application. However, if things can be realistically expected to change in that time frame, the PCT application is a good avenue to keep your options open.
A PCT application is considered a foreign filing, so any request to not publish your application , must be revoked when filing a PCT application. That means that your U.S. application will also be published, and the file wrapper will be open to the public for inspection moving forward. If privacy until a patent issues is a concern, that needs to be balanced against the filing of a PCT application.
Once a PCT application is filed, the International Searching Authority will send a search report and written opinion, then an international preliminary report on patentability. These are sent at approximately 18 months and 28 months. There are two chances to amend the international claims, through an Article 19 and an Article 34 amendment. Each of these amendments trigger additional cost. Claim amendments at the PCT might be useful if the International Search Authority agrees that the claims are patentable prior to going into the international phase.
The national phase due date for filing is 30 months from the priority date. At this time you must select which countries to file your application in. The application is then filed in each country individually. The costs for filing in individual countries normally ranges from $2,000-$8,000. It is possible to file a regional European application based on a PCT filing. Our clients generally find us to be cost effective as an affordable PCT patent lawyer.
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