First, you notice I didn’t say PCT patent. A PCT application is like provisional patent in that it can give you up to 30 months to file for a utility patent.
The PCT application has recently become more attractive as 18 countries in Europe have a unified patent now which means when you apply for a unified patent that covers Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia, and Sweden. The two big European countries it doesn’t cover are Spain and the United Kingdom.
Don Debelak offers affordable patent applications http://www.patentsbydondebelak.com
There are three paths for PCT applications.
- File a PCT application, then you have 30 months to file for additional patents in any country, or the unified countries if you desire. Your PCT application needs a request, which is a procedural requirement that is easily done and the following elements which are very close to the requirements for a US patent, except the US patent office has more emphasis on drawings.
Description: a written explanation of the invention clear enough that a person with a background in your invention’s particular technical field invention could reproduce the invention from the information provided (Note: certain States also require the description to contain information on the best method for carrying out the invention)
Claims: a set of numbered paragraphs that define the scope of your invention
Drawings of the invention: required only if necessary to understand the invention
“Abstract”: a short summary of the invention.
The drawback to this approach is that a PCT application doesn’t allow you to stop infringers as it only a step to getting a patent that will allow you to stop infringers. So you are looking at perhaps four to five years before you can stop infringements.
- File a US patent, and then within 12 months file a PCT application. You have 30 months total time to file patents in other countries from the time of your US patent. I like to enter a PCT application soon after a US patent application, if you can afford the PCT application fees ( approximately $2,000 plus attorney or agent fees) because with all PCT patent application you get in less than year (in my experience) an International Search Report and opinion on patentability. Depending on what the report says, you might want to amend your application, or possibly apply for a continuation in part to overcome the objections.
This is one way to fast track your application path to a Notice of Allowance. Another, I feel, better path to a faster Notice of Allowance is through the patent office’s Title 1 program, which allows you to pay for prioritized examination. US Patent Office fees for a micro entity are now $868 for a micro entity up to $4,400 for a large entity. If one of your inventor’s is over 65, you can get expedited examination through the Patent Office’s Petition to Make Special rules for no charge.
- File a provisional US patent and then a PCT application within 12 months, which gives you 30 months to apply for National Phase patents, which are patents in each country you desire, though the new unified patent listed earlier gives you access to 18 counties with one filing. I’m not a fan of this approach as it takes a long time to actually stop someone from infringing on a patent.
Some people like this approach because they can work on more details of their invention during the provisional period. But I feel this could put the inventor in a really bad spot. Technically, your provisional patent needs to cover the invention details of your utility patent for it to qualify as a priority date. So in any type of dispute, the priority date of the provisional patent could come into question and substantial changes in your invention between the provisional patent and the utility patent could affect your application’s priority date. This is why I don’t recommend the $199.00 provisional patent applications you see advertised on the Internet. They may not hold up in a dispute.