In theory, PCT application fees should make the PCT route to foreign patent filing more expensive (overall) than direct Paris Convention filings. However, reality isn’t always that simple.
First, the additional 18 months the PCT buys allow better assessment of an invention’s likely commercial value.
Second, the International Search Report (ISR) issued during this period often provides a reasonable indication of prior art that will be faced during national phase examination.
Via these advantages, the PCT enables applicants to dynamically adjust the average cost per filing in a way that direct Paris Convention filings simply don’t allow. For example, PCT applications for inventions of low commercial value can be allowed to lapse, or national phase can be entered in fewer countries. Higher value applications can be filed more broadly.
Finally, if you can keep national phase entry costs low enough (get an estimate via our foreign filing platform), the PCT route can be cheaper overall even without taking these factors into account.
Maybe applicants should consider whether they can afford not to use the PCT!
This post raised two points to me. Why couldn’t you provide the convention filings also through inovia and its agents? I don’t think it would change the procedure too much. The other point is that in using PCT application it may steer the later examination in different national patent offices to the same direction and therefore one might be able to get more consistent patent family (also reducing costs as there are not so many different references). I have no statistics or proof about this but it might work at least in some cases.
Hello Markku, thanks for your comment.
The ability to defer initial decisions about prosecution is, as you say, another potential advantage offered by the PCT.
If nothing else, many applicants will already have prosecuted the priority application by the time examination commences for the corresponding foreign applications following national phase entry.
This experience may provide something of a template for preliminary amendments when requesting examination, for example.
Regarding Paris Convention filings, it’s an interesting idea – and we always like hearing those!