PCT Strategies and Recommendations

• Author: Jay Erstling - Samson Helfgott - T. David Reed
• Pages: 199-242

199

CHAPTER 9

PCT Strategies and

Recommendations

1. First Filing Your Application

Filing a PCT application inherently includes the filing of a U.S. appli-

cation. However, the main reason applicants file PCT applications is

that they are considering filing in other countries. As a result, the filing

of PCT application should be considered as a foreign filing. With that

in mind, applicants must take into consideration the different laws of

countries outside the United States and must be sure to comply with

those laws at the time of filing the PCT application.

Additionally, as there are numerous ways to obtain the benefits of

a PCT application, it is important to be aware of those ways and make

use of them in a strategic manner that fits each particular application.

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200 The Practitioner’s Guide to the PCT

Each individual application should be analyzed, and the appropriate

methodology used to file the application should be chosen based upon

the technology involved, the importance of the invention, its potential

use, and other considerations.

2. Different Laws in Different Countries

In order to be sure that your PCT application will be a viable application

in foreign countries, care must be given to the various laws in foreign

countries that may be different from those in the United States. In many

cases the patent laws of many countries have been harmonized, but

there are still differences, and these must be considered.

For many years, the United States remained the only country

with a first-to-invent system, while the rest of the world adopted

first-to-file systems. Having harmonized U.S. law so that the United

States is now also a first-inventor-to-file country, U.S. applicants

should give appropriate consideration to getting their applications

filed as soon as possible and, hopefully, will no longer rely on the

date of invention.

However, other differences still exist, for example, with respect

to grace period. The United States still has a one-year grace period,

as do some other countries of the world. Some countries have only

a six-month grace period, while in most countries, including mem-

ber countries of the European Patent Convention (and the EPO), no

grace period exists at all. And in countries with a grace period, the

right to invoke it may differ significantly. As a result, it is too late to

consider the differences in national and regional patent laws only at

the time of filing a PCT application. It is important that applicants

contemplating international protection consider those differences

even before they file their priority application and, in the case of the

availability of a grace period, that they take precautions not to dis-

close their inventions prior to filing, especially if protection is desired

in Europe.

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PCT Strategies and Recommendations 201

3. Various Ways to Obtain the Filing

of a PCT Application

In filing a PCT application, an applicant may typically claim the bene-

fit of an earlier filed national application. When doing so in the United

States, that earlier filed application can be a provisional application,

a nonprovisional application, or another PCT application. There are

also instances where an applicant may want to file a PCT application

first without claiming the benefit of any previously filed national

priority application. There are strategic reasons for choosing each

of these routes. There may be greater up-front costs associated with

one of these routes as compared to the others. Some routes may pro-

vide the ability to obtain earlier search results before making strategic

and costly decisions. Some routes may provide the ability of obtain-

ing earlier protection in the United States. Decisions should be made

on a case-by-case basis as to which route is more appropriate for an

application.

Once a particular strategic route is chosen, an applicant must be

knowledgeable in how to properly claim the benefit of the priority

application, assuming that there is at least one priority claim. Appli-

cants must be aware that there are differences in filling out the request

form that reflect the different types of priority applications upon which

they may rely. Knowing how to properly claim the benefit of a priority

application is an important part of the PCT application process.

3.1 Using a U.S. Provisional Application as Priority

for the PCT Application

One strategy is to initially file a U.S. provisional application, and at the

end of the year, file a PCT application claiming the benefit of the provi-

sional application. With respect to the U.S. protection, two options are

then available. One is simply to rely on the PCT for any U.S. filing and

not file a nonprovisional application at the end of the year, thereby per-

mitting the U.S. provisional application to lapse. The other possibility is

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