Should you file applications via the PCT?

The “Patent Co-operation Treaty”, or “PCT” is an international agreement allowing applicants to file a single application in their home territory, which has effect in all PCT states (which is, these days, pretty well everywhere).  This effectively postpones the deadline for filing in individual national patent offices from 12 months to 30 months*.  There is a cost, however; the PCT application adds about £3,500 in official fees and professional charges to the overall bill.  So, it is worth it?

In my opinion, the answer is a resounding “yes”.  I’ll try to explain why.  First, a few facts.

For an individual application that has proceeded to grant in a number of states, the use of the PCT for that application will have been, with hindsight, more expensive than direct national filings.

This follows from the fact that the work needed to convert a PCT application into a regular national filing is roughly the same as that in filing the application at 12 months.  Thus, the PCT costs add to the rest of the case costs.

One problem is that the decisions about what to do have to be made in advance, not with hindsight. 

Here is the first reason fro using the PCT.  Over an entire patent portfolio, in which some cases will be successful and go to grant and some will not, the use of the PCT for the whole portfolio will result in lower overall costs. 

This is because through the PCT, the cost accrues incrementally and in line with increasing knowledge of the application’s prospects.  This allows you to drop the cases that are not certain enough – the money saved in this way typically funds the additional cost of the PCT filings for all the others, with some to spare. 

For example, Procter & Gamble are quoted by WIPO as saying that they drop 20% of their applications at the 30-month deadline as a result of art located by the PCT search.  That sounds about right to me, in the light of my experience.  The money saved by not filing that 20% of applications, and not arguing with examiners until you are blue in the face and finally give up, will be substantial.  In my experience, it is easily enough to pay for PCT applications for the entire portfolio. 

You are also more likely to be able to assess the commercial importance of an idea at 30 months than at 12 months. 

This allows you (either) to file the less important cases more narrowly, thereby saving costs again, or file more important cases more widely (depending on your point of view).

Also, at the 30-month stage it is easy to introduce an amendment that limits the claim scope down to what you believe to be allowable, based on the PCT results.  In addition, you can often present arguments explaining why objections raised in the PCT are not correct.  Sometimes this will be a waste of time, because the examiner in the national patent office will often be different to the one who did the PCT work, so they will naturally come to their own opinion.  Thus, this will not guarantee a smooth ride in the national phase (nothing can, sadly) but it often helps by eliminating one round of examination – over a portfolio, this is a substantial saving.  

So the PCT allows you to reduce the costs over a portfolio, by spending more on the cases that are successful but saving distinctly more on the cases that the PCT allows you to identify as non-winners before substantial sums are incurred.
Now, there are two ways in which we could escape this and make national applications the cheaper option.  One is to be more confident prior to filing the application at all – i.e. only file the winners, therefore we don’t need the PCT in order to identify them.  This requires pre-filing searches of a quality as least as good as a PCT search.  Typically, such searches are more expensive than a PCT application, unless you already have extensive in-house searching facilities.  So overall, you will end up spending even more – and bringing those costs even earlier in the life cycle of the invention, before you know its commercial importance.
The other way is not to take any notice of the PCT results and press on anyway for every application!  I wouldn’t recommend that, for obvious reasons!
So, although it seems counter-intuitive when looking at one application with hindsight, my experience is that the lowest-cost strategy is as follows:
1. File a local application with a search request – for me, that is the UK Intellectual Property Office.  This gives me the benefit of the UK IPO search, which is not as rigorous as a PCT or EPO search but is easily the most cost-effective.  Use that search as a first rough cut to eliminate clearly unpatentable ideas and direct the scope of the potentially allowable applications more accurately.
2. File a PCT at 12 months.  Give the search results serious consideration; bear in mind that patent office examiners are uniformly pessimistic, but if they do succeed in showing the invention to be unpatentable then take note and drop the application.
3. At 30 months, divide the remaining applications into two groups based on their commercial importance.  File the important cases widely and the less important cases in just the core countries (e.g. just EP+US, or EP+US+JP).  Where necessary, enter the national phases with an amendment.
So that’s my recommendation & the brief reasons for it.

*It’s actually a lot more complex than that, with many nuances.  But mostly, you needn’t worry about them.  Unless you’re a patent attorney, or you are handling the application yourself.
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