Pros and Cons of Filing a U.S. Versus a PCT Application First. Episode 38

Introduction

This is going to be the last episode for now related to foreign patent applications.

So far, I’ve covered:

• What a PCT application is

• How PCT applications differ from U.S. applications

• How to file a PCT application

• PCT timelines and deadlines

• How to file in non-PCT countries

In this episode, I’m going to discuss something I’ve referenced several times throughout the podcast—whether to file a PCT application first or a U.S. application first, and why you might choose one over the other.

Understanding PCT and U.S. Filing Strategies

A PCT application is a single application that allows you to enter patent offices in most countries throughout the world, generally within 30 months of your first-filed application, including the United States.

Alternatively, you can file a U.S. application first, and then within 12 months, file a PCT application. After 30 months from your U.S. filing date, you can enter into most foreign countries.

Since the United States is one of the countries you can enter from your PCT application, why not just file a PCT application first and then enter the U.S. later? Why bother filing a U.S. application first at all?

Many applicants do file a PCT application first and enter the U.S. later. But why would you choose one option over the other?

That’s what I’m going to cover—the pros and cons of filing a U.S. application first versus a PCT application first.

Four Main Considerations

There are four primary factors to consider when deciding whether to file a U.S. or PCT application first:

1. Countries you’re interested in

2. Money (cost considerations)

3. Information received at specific times

4. How many versions of your invention exist in your applications

Each factor weighs differently depending on your specific circumstances, and there is no single correct answer for everyone.

Factor 1: Countries Where You Want Protection

If you only want patent protection in the United States, there is no reason to file a PCT application. You should just file a U.S. application first.

However, if there is a small chance that you may want protection in other countries later, you might still want to file in the U.S. first. Then, by the 12-month mark, you can decide whether to file a PCT application.

If you filed a PCT application first but only wanted a U.S. patent, you would end up paying twice—once for the PCT filing fees and later for the U.S. national stage fees. This would mean unnecessary additional costs.

If you know you’ll be filing in multiple countries, this leans in favor of filing a PCT application first.

If you are considering only 1–3 additional foreign countries, it may be better to file directly in those countries rather than going through the PCT route. However, beyond 3 countries, a PCT application is usually the better choice.

Factor 2: Cost Considerations

PCT applications are generally more expensive to file than U.S. applications.

• Filing fees for a PCT application are typically $2,000–$3,000 more than a U.S. application.

• The difference in cost is not due to attorney fees—it’s mostly official filing fees.

• If a U.S. application costs $7,000, a PCT application might cost $10,000.

If you are short on money, filing a U.S. application first allows you to spread costs over time.

• You can file a U.S. application now, and if needed, pay for a PCT application later at the 12-month mark.

If a few thousand dollars doesn’t make a difference to you, cost alone should not determine your decision. Instead, you should consider other factors.

Factor 3: Timing and Information Received

When Do You Receive an Opinion About Your Patentability?

• U.S. applications: The USPTO may take more than a year to issue an examination opinion.

• PCT applications: You will typically receive your International Search Report and Written Opinion within 10–11 months.

If you file a PCT application first, you will likely receive a patentability opinion before your 12-month deadline, helping you decide whether to file in non-PCT countries.

If you file a U.S. application first, you may not receive an opinion within 12 months, forcing you to make a decision about foreign filings without key information.

Thus, if you want early feedback on patentability, filing a PCT application first is advantageous.

Factor 4: How Many Versions of Your Invention Exist

Patent rules require that you only claim one invention per patent application. However, you may have different versions of your invention.

• PCT applications may allow more flexibility in keeping multiple versions together under a single application.

• U.S. applications may require additional fees or require you to split applications into multiple divisional applications.

Thus, if you have multiple variations of your invention, filing a PCT application first may allow you to avoid extra fees and keep your inventions together longer.

Other Considerations: The Role of Provisional Applications

If you filed a U.S. provisional application, you must decide whether to file a U.S. application or a PCT application within 12 months.

The same factors discussed earlier should guide your decision, except that your priority timeline starts from your provisional application date.

Rules of Thumb for Choosing Between a U.S. or PCT Application First

When to File a U.S. Application First

• If you only want a U.S. patent.

• If you don’t have much money and need to spread costs over time.

• If your #1 priority is getting a U.S. patent quickly, especially using Track 1 expedited examination.

When to File a PCT Application First

• If you know you’ll file in multiple foreign countries.

• If you want an early patentability opinion.

• If you have multiple versions of your invention and want to keep them together longer.

Final Thoughts

This is the last episode (for now) on PCT applications.

There are still many PCT-related topics I haven’t covered, such as:

• How to amend claims in a PCT application

• How to argue for patentability in a PCT application

I will likely cover these topics in the future.

Even if you’re not interested in foreign patents, you should still be aware that you have 12 months after filing a U.S. application to decide whether to file a PCT application. I'm Adam Diament, and until next time, keep on inventing!