FAQ of the Week: Should we file a PCT application?

Should I file a PCT application

Question

Should we file a PCT application?

Answer

It has been almost 12 months since we filed the US application, and yes, I agree that filing a PCT (Patent Cooperation Treaty) application would be the best course of action right now.  Filing a PCT application affords you number of benefits over filing directly in multiple countries, including the following two benefits:

First, a PCT application serves as a placeholder that allows you to decide which countries you would like to file in within at least 18 months of filing the PCT application.  This benefit is especially valuable because it allows you to keep your priority date while buying you a significant amount of time to decide which countries would fall in line with your business objectives.

Second, the PCT application process provides a consistent framework to go forward with filing applications.  Filing directly in different countries requires us to heavily coordinate with foreign associates to ensure the applications comply with country-specific requirements.

We can enter the national stage any time during the next 18 months, and we can start by filing right now in Europe (through the European Patent Office – EPO).  We will then have the remainder of the approximately 18 month period following the filing to decide if and when you would like to file in China, Japan, Mexico and other countries.

However, please note that a small number of countries do not participate in the PCT, which can be found here.  After reviewing your past filings, I did not find any patent application filings in non-PCT countries.  If any of the countries listed in the link are of interest, please let me know right away.