PCT vs. Paris

PCT versus the Paris Convention

While I’m a firm advocate of the PCT (well, I would be wouldn’t I?), direct Paris Convention filing will also have a place in the filing strategies of many applicants.

Some advantages of the PCT are:

  • A single application can be filed in the applicant’s home country, in the local language.

  • It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

  • The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

  • Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.

That said, there are a few advantages that only direct filings can offer:

  1. While many applicants want to delay the costs associated with examination and grant of a patent (and the PCT offers this), sometimes fast grant of the patent is desirable. The sooner an application is filed in an individual country, the sooner it can be examined. Direct filings can often proceed to grant significantly faster than those going by the PCT route.

  2. Universal coverage: the PCT covers over 130 countries, including the vast majority of major commercial destinations. However, there are a few notable non-PCT countries, including Taiwan and Argentina. If you want coverage in those, it will be necessary to file directly using either the Paris convention (or – as may be the case with Taiwan – an equivalent bilateral agreement with the applicant’s country, assuming one exists).

  3. Completely different and tailored content for each country. With the PCT, applicants must draft a single patent specification that takes into account the different legal requirements of all countries. While formality issues aren’t such a problem, there may be situations where an applicant would prefer different content to file in, for example, Europe and the USA. The sorts of problems that such different content would seek to avoid tend to be industry specific; for example, different approaches to information technology and pharmaceutical patents in certain jurisdictions may make it difficult to provide a “one size fits all” specification that is perfectly tailored to all jurisdictions.

In essence, in many cases it pays to think of PCT and Paris Convention applications as being complementary rather than alternative approaches to foreign filing.

 

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