Rule 1: File a PCT application instead of direct foreign filings

Rule 1 of 7

As the convention priority year comes to a close, decisions need to be made about the invention that is the subject of the priority filing. Is there sufficient commercial interest (or advantage) to justify the costs of continuing with the patent process? If so, in how many countries is patent protection to be pursued – and in which one?

In some cases it might make sense to just maintain protection locally, or perhaps to add only one or two other major countries.

However, if broader foreign filings is required- or if you’re not sure and you want to keep your options open! – a Patent Cooperation Treaty (PCT) application can help you maximize the number of countries in which your rights are kept alive.

Filing a PCT application effectively delays the most significant costs associated with foreign filings by at least 18 months. This critical additional period may allow you to develop a clearer commercial picture before you need commit to the substantial costs of foreign filings by entering the national phase.

The International Search Report can also give an indication (albeit with no guarantees!) of the sort of prior art that might be faced during national examination.

The total cost of using the PCT may be slightly higher, because the initial filing fees are relatively high. However, all costs associated with individual national filings are deferred.

The ability to keep your options open for so much longer will in many cases more than outweigh the cost difference.

Photo credit: canolais


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