Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse.
It must be remembered that a PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries’ patent systems need to be taken into account when amending and adding claims, both during the international phase and when entering the national phase.
A client recently approached us with 15 technologically related co-pending PCT applications. Money was temporarily tight, and they (like most applicants) wanted to maximise the coverage they could get in a number of countries. Even with the money we were able to save them per country, it was unrealistic for them to get coverage for all 15 inventions in all the countries they wanted.
Interestingly, due to a hurried filing by the client’s previous attorney, the specification had an identical description, even down to the abstract and summary of invention. The only difference in each case was the claims.
It is at this point that an understanding of the different ways different countries treat the introduction of new claims (and the amendment of existing claims) comes in handy if you want to save some money right now.
In some countries, it is possible to add new claims to an existing specification as long as the specification would have supported those claims in the first place. In such countries, it is feasible to enter the national phase with only one of the PCT applications, whilst adding the claims by way of amendment. Indeed, since amendments made at national phase entry in a particular country are essentially amendments made during the pendency of an existing patent application in that country, there is nothing special about the timing of those amendments. They can made at national phase entry (which is useful to ensure potential infringers are placed on notice), at a later date such as when requesting examination, or even left to form part of a divisional or continuation application after prosecution of the original claims is complete.
In this case, the client took specific advice from each of our agents as to the allowability of taking claims from one or more of the pending PCT applications and allowing those applications to lapse. The claims would then be added to one or more of the remaining PCT applications.
In the best of cases, this meant retaining only a single application and eventually adding all the other claimsets (either at national phase entry, or at some time in the future) during the remaining application’s pendency. In the worst case, every PCT application for which protection wanted to be retained needed to enter the national phase.
See our next blog post with more details about various countries’ claims issues.
The client was able to tailor a unique national phase filing strategy that took into account local law and practice for each country. In different countries, it took 1, 3, 6 or 15 applications to obtain protection for all the inventions, taking into account the level of support for various claims in the specification, the various combinations of inventors that existed, and the individual countries’ laws. The result was far lower national phase costs at a time when funds for this client were particularly tight compared to what they are expected to be over the next year or two.
A Cautionary Comment
Of course, this article relates to a specific example, and not every set of co-pending PCT applications by a particular client will offer the ability to combine claims and reduce the number of national phase entries in this way. Indeed, where less than two or three cases are involved, the cost advantage is probably not great enough to make it worth pursuing.
It must also be said that in an ideal world (where money was no object!) it would almost always be preferable to keep all co-pending cases alive in all countries, unless there is specific, literal support in the specification for each and every claim you wish to introduce from a co-pending application. Unpredictable examiners and courts can all conspire to make those claims potentially less valid (or at least seem less valid) than if they’d been pursued via a national phase application from the original PCT application.
And finally, you obviously need to keep an eye on priorities. If the PCT applications have different priority documents, you need to ensure that there is adequate support in each application’s priority document(s) for any claim you wish to add to that application.