I am going to make a bold statement: every non-provisional patent application for an invention originating in the U.S. should be filed via the Patent Cooperation Treaty (PCT) first. Then, after another six months, following the international search, and PCT publication, those who desire U.S. patents should enter the U.S. National Stage. That’s right: every single application, no exceptions. No, I have not lost my mind. Here’s why.
A Secret Society
You may wonder what I am talking about? You cannot see what strategy is executed or left on the table vis-à-vis filing or not filing a PCT application with respect to the United States. Isn’t the PCT just a way to shelve foreign filing for a while, and put off the costs thereof (translations, foreign associate fees, filing fees, etc.) for another 18 months? Yes, that is what it can do, and that is the effect most filers are seeking, but there’s also much more that can be done. It’s okay if all of this is news to you; you and your fellow U.S. practitioners are all similarly informed. You see, PCT practice has been sort of a secret society as its numbers have slowly grown, roughly doubling in the last 10 years. Well, welcome to PCT in the modern age of the Patent Prosecution Highway. Say what? What does PPH have to do with PCT? After all, it only has an effect on in-bound National Stage filings, right? Exactly!
You see, when you file a regular U.S. non-provisional application, you pay fees for filing, searching, and examination. (About $1,820, large entity). And, then, you wait…(tick-tock, tick-tock)…until such time, in the fullness thereof, that the USPTO sees fit to begin the examination. In some technical fields, this can be years. You have your staff check the USPTO office action calculator, check Private and Public PAIR to see if an examiner has been assigned, etc., and keep your clients informed and try and manage expectations. But, suppose you could control that timeline – across all technologies – what then? Well you’d have a happier, more engaged client, and you would get better results, i.e., fewer actions and more allowances, faster. Here’s how.
It’s All In the Numbers
When a PCT is filed, typically at 12 months past your provisional filing date, you pay some fees. These are: a transmittal fee of $260, a search fee of $2,160 (for the United States anyway; others are less expensive, sometimes considerably less), and a filing fee of $1,229 (an odd number because of the Swiss Franc Conversion). Essentially, you’re out about $3,500 or so in fees to file a PCT. What do these fees get: a search, a preliminary report on patentability and a publication. The search occurs quite quickly, i.e., before the 18-month publication. Here’s the kicker, if the search is positive, i.e., it indicates that the claimed invention has novelty, inventive step (i.e., is nonobvious), and has industrial applicability (that is, passes muster under our 35 USC 112(a)) as to at least one claim, it is eligible for PPH treatment upon entry into the National Stage. Thus, now enter National Stage, pay the usual U.S. filing fees (large, small, micro entity), and jump to the head of the line and have your examination now begin, no waiting. This is all occurring within two years of filing your provisional(!); you have initiated examination on the non- provisional, and you’ve saved the $4,200 Track-1 Prioritized Examination fee. But, not so fast, you did spend $3,500 or so to file the PCT—however, that can be cut down another $1,000 or so if a search entity other than the United States or European Patent Office (EPO) is chosen and, if filed directly in Geneva, using ePCT, you can save some of the transmittal fee. So, that $3,500 can be reduced to $2,200 or so, only $400 more than a regular U.S. non-provisional filing. Regardless, you’ve procured a search, you’ve controlled the timeline in the United States, and you’ve preserved the possibility of further filings in 153 PCT-member countries around the world for another 18 months past the lapse of your provisional. Most clients would be thrilled to pursue this route, if they knew the consequences.
But wait, there’s more (in the Ginsu Knife tradition)! If you want to proceed to PCT Chapter II (a $600 cost), and the United States was your chosen searching authority in the above strategy, and all claims are considered to have novelty, inventive step, and industrial applicability, your National Stage fees for examination ($800) and search ($700), are zero. That’s not a typo: zero. All you pay is a National Filing Fee of $330 and you are eligible for PPH. So, spend $640 to save $1,500 and get prioritized examination to boot. Pretty cool. Note: Before the Chapter II examination begins you make amendments (Article 34), in light of the results of the prior international search, so you can assure this outcome for the claims. (Look for another upcoming article on going PCT first—it makes the above timeline even faster!)
Train Your Staff to Drive the PCT Train
But none of this is going to happen without thoughtfulness on your part and training on the part of your support staff. Part of the reason for the secret society type pursuit of PCT has been that everyone has heard it is difficult, mistakes can be made, and awful liability can attach. All true. But, with the new ePCT system rolled out by the Word Intellectual Property Organization (WIPO), it is as easy, if used regularly, as the U.S.-based EFS system. In some ways, in fact, it is better, especially in keeping track of a large docket.
So, time to board the PCT train. Your clients will like it, you’ll be providing leveraged value and preserving the possibility of patent rights around the world, and you’ll control the timeline in the United States for prosecution for any technology. Level that timeline playing field and eliminate “luck of the draw” waiting! The additional cost on the low end is about $2,200 for a large entity—far less than the $4,200 prioritized exam fee (plus no annual 10,000 application filing cap like there is for Track 1 examination).
Read the original article on IPWatchdog: https://www.ipwatchdog.com/2020/11/22/time-board-pct-train-benefits-filing-us-patent-applications-via-pct-first/id=127518/
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