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August 17, 2023

August 17, 2023

"Strategic Considerations for International Patent Filings: Exploring the PCT vs. Direct Filing Routes" - by Seed IP partner Bobby Soltani

Strategic Considerations for International Patent Filings: Exploring the PCT vs. Direct Filing Routes

Introduction

When navigating the dynamic landscape of international patent protection, it is essential to understand the strategic implications of two primary routes to international patent filing:  (1) using the Patent Cooperation Treaty (PCT); and (2) directly filing in individual countries through the Paris Convention. Both pathways offer distinct advantages, necessitating a thorough understanding of each to make informed filing decisions.

The PCT route, administered by the World Intellectual Property Organization (WIPO), offers a unified procedure for filing a single international patent application, effectively covering over 150 member countries. A PCT application is an international patent application that preserves the applicant’s priority date and also delays the date when the applicant is required to file foreign patent applications.

The “direct filing” route involves submitting individual patent applications directly to the patent office of each country or region from which protection is sought. Under the Paris Convention, an initial patent filing in a member country, such as the U.S., allows the applicant to then file in other signatory countries within 12 months, while retaining the initial filing date. This priority right enables the applicant to avoid being disadvantaged by their own disclosures or by third party activities occurring after the initial priority filing, but before subsequent filings in other jurisdictions.

Understanding the pros and cons of each is essential for making an informed decision that best serves the organization’s interests. Below, we delve into the pros and cons of both the PCT and direct filing routes. 

The PCT Route 

Using the tenets of the Patent Cooperation Treaty facilitates patent protection in over 150 countries through a single international patent application. This process can present a number of distinct advantages.

Pros:

  1. Extended Decision-Making Timeline: Perhaps the most significant benefit of the PCT route is the flexibility it provides. The PCT process offers a generous 30-month window from the earliest priority date for applicants to determine in which countries they wish to pursue patent protection, allowing considerable time for business considerations.
  2. Deferred Costs: Filing a PCT application is the cheaper option in the short term, reducing costs early on while the applicant assesses where to pursue patent protection.
  3. Streamlined Process: The PCT system simplifies the filing process by allowing applicants to file a single application in one language with one set of fees, reducing the immediate administrative burden.
  4. International Search Report and Written Opinion: The International Searching Authority (ISA) performs a patentability search for PCT applicants, and provides a corresponding report and written opinion. These tools are not binding on national patent offices, and can offer valuable insights regarding the likelihood of patentability before applicants decide in which countries to file for patent protection.

 There are, however, downsides of filing a PCT application to consider:

 Cons:

  1. No International Patent is Granted: A PCT application “buys” the applicant additional time to decide in which countries to file patent applications, but there is no actual patent granted on the PCT application itself.
  2. Potential for Higher Costs: While the up-front costs are lower, the cumulative costs of a PCT application can be greater overall due to the costs of the PCT application itself, which is in addition to the patent office fees due in each country where patent protection is sought. Typically, the filing cost for a PCT application ranges from $5,000 to $6,000 USD.
  3. Delay in Grant: The patent grant process via the PCT route is typically lengthier, largely due to the 30-month waiting period before national phase entry.

Direct Filing in Individual Countries 

Direct filing in individual countries bypasses the PCT process and can be an attractive alternative for applicants with specific markets in mind.

Pros:

  1. Faster Grant Potential: Direct filings can expedite the patent grant process by 18 months or more in countries where protection is sought.
  2. Cost-Effectiveness: For applicants targeting patent protection in only a handful of countries, direct filing may prove more cost-effective over the long run because the costs for filing a PCT application are avoided.

Direct filing also has its challenges:

 Cons:

  1. Limited Decision Time: Direct filings must be completed within 12 months of the first (priority) filing, limiting the time for market evaluation and planning.
  2. Increased Initial Complexity and Costs: Direct filings in multiple countries require adherence to each country’s specific filing requirements and fees, potentially necessitating multiple language translations and escalating initial costs.
  3. Absence of a Search Report: Unlike the PCT route, direct filings do not provide a search report or written opinion on patentability.

Conclusion

Choosing between the PCT route or directly filing in individual countries can be a complex decision that depends on the applicant’s objectives, financial considerations, and target markets. Careful deliberation and strategic planning can ensure that the chosen patent filing route aligns with the organization’s intellectual property objectives and business goals. As a decision-maker, an understanding of these routes is vital to directing this important process.

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About the author

Bobby Soltani's practice focuses on the U.S. and foreign patent prosecution of electrical engineering and computer software matters and patent litigation, infringement opinions, licensing, and strategic portfolio management. He received a B.S. in Electrical Engineering from the University of Oklahoma (2001), and an M.S. in Electrical Engineering from Oklahoma State University (2003). Bobby holds a J.D. from the University of Oklahoma College of Law (2007).

Bobby is admitted to practice in Washington (2010) and Colorado (2007) and is registered to practice before the U.S. Patent and Trademark Office. He is a board member for the Washington State Patent Law Association (WSPLA). Bobby is also a member of the American Intellectual Property Law Association (AIPLA) and the Institute of Electrical and Electronics Engineers (IEEE). Bobby also lectures on U.S. patent practice at the University of Washington's renowned Center for Advanced Study and Research on Innovation Policy (CASRIP).

Read more about Bobby Soltani.

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