Should I file a Non-Provisional Patent Application or a PCT Patent Application?

Stuck trying to decide on which patent application to file? Sometimes the answer is: both!
Posted on
July 8, 2022
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A lot of people file a provisional patent and then a year later must decide whether to file a non-provisional patent application or a PCT patent application or both, this is a response that we have given to one of our clients in the past who have asked the same question:

When considering either, why not choose both?

1.      Regardless of where you decide to file, we need to get your application prepared for filing as a non-provisional patent application. Meaning, that if you are seeking help in this process, preparation will be necessary no matter the direction you go.

2.      Then we file the non-provisional patent application in one or more jurisdictions. Here are the typical options:

                           a.      File ONLY in the US:

                                        i.     The US document preparation.

                                        ii.     There is an additional government filing fee.

                                        iii.    NOTE: Filing only in the US will forego your opportunity to file in
                                                foreign countries. If you want to preserve the right to file in
                                                foreign countries, you must do a different option.

                           b.      File ONLY in the PCT (a treaty among many countries):

                                         i.     The PCT document preparation

                                         ii.     The PCT filing fee is additional.

                                         iii.    NOTE: You must plan to file in the US and/or specific foreign
                                                 countries within 18 months.

                            c.      File in BOTH the US and the PCT:

                                          i.     The US document preparation

                                          ii.     The government filing fee is additional).

                                          iii.    The PCT document preparation is additional.

                                          iv.    The PCT filing fee is additional.

                                          v.    NOTE: You must plan to file in specific foreign countries within
                                                 18 months in the US and PCT now, and plan to file in specific
                                                 foreign countries within 18 months.

In Conclusion

The top three takeaways that you should get from this post and e-mail are the following: First, you must prepare the application to be filed whether you do a non-provisional or a PCT patent application or both, so you have the cost of preparing the patent application either way. Second, a lot of people want to get their US patent rights in place relatively quickly, so they file for The US application upfront. Lastly, if there is any reason that you may file foreign patent applications then you should, and if you are uncertain of which countries you will want to file in right now, then you should file a PCT patent application to keep your options open.

Ergo, when considering filing a Non-Provisional Patent Application or a PCT Patent Application, why not file both?

Jeff Holman
Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies.

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