PCT Strategies

DO I NEED A PCT APPLICATION?

The inventor or a small business must base his decision more than on a simple desire to protect his invention in many countries.

Inventors should keep in mind that obtaining patents in other countries could be costly and the costs can quickly go beyond the capacity of most small businesses.

Patent protection in the U.S. typically represents only a small fraction of the cost of international patent protection.

It does not make sense to file a PCT application, if an invention has been publicly disclosed or there was an attempt to sell an invention before filing a patent application.

U.S. laws allow public disclosure of inventions up to one year prior to filing of a patent application, but such disclosure could deprive the applicant of right to patent the invention in other countries.

The applicant may use the date of the previously filed application as the priority date for the PCT application if such application is filed within a year of filing the PCT application.

Thus, any application that is used for the priority date of the PCT application must be filed before the public disclosure and no more than a year before the PCT application.  If a previously filed application does not exist, the priority date is the date of filing of the PCT application.

Oftentimes, small businesses just want to consider different options in trying to attract investors for a sale or licensing of the inventions.  Thus, it makes sense to apply in the U.S. (provisional or non-provisional), and then within a year, apply for a PCT application that uses the previously filed application as the priority document. This will permit the inventor to defer a decision up for 18 months (time to enter national phase).  That option could cost anywhere between $2,000 and $3,500 more than a US non-provisional application.

PCT STRATEGY

Some strategies in selection of an international search office may save money, but at the same time could create other significant problems.  International Search Office is a Patent Office, which performs preliminary analysis of patentability.

NATIONAL PHASE

When does the national phase start?  If you are in the national phase of the PCT process and not sure which countries you should file in, consider several factors.

In making this decision you should be guided by several goals, including where the main markets for your products are at the moment, where those markets will be in the future, where the production is today, where will the production be in the future, where your competitors produce and sell their products, and the amount you must spend on patent protection.

If the applicant is interested in patent protection in many countries, the initial phase of the PCT process should be started with the expectation that the national stage (30 months from the priority date), will be in favor of key countries where the applicant is going to sell or manufacture, and possibly import, distribute, use or carry his invention.  When competitors are known, patents obtained in countries where the competitors are can be very effective, because the manufacture and marketing of inventions will be protected.

The decision as to in which countries to continue with the national stage (30 months from the priority date), must be taken into account the actual protection of patented inventions in the country.  Major efforts should be directed to the countries that offer reliable protection of intellectual property.

PRACTICAL SOLUTIONS

Conclusion and caveats.  Ultimately, the choice about where to seek patent protection is a strategic issue based on economic factors.  PCT allows more options.  The PCT process allows you to defer a final decision on the country or countries in which you wish to obtain protection, as well as deferred decisions about how much you can spend on obtaining the patents.