PCT filing practice

[bardencj]

I'd be curious to hear from those of you who do international filings how you tend to do it. 

I realize this is an open-ended question which depends on many factors, including whether the applicant is short of cash, how quickly they might want a patent, whether the country of interest is a PCT signatory, etc.  But mostly I'm just trying to get a handle on typical "best practices" and see how much difference there might be in the answers, depending on the kinds of cases you all usually handle.

For example, do you tend to file a US nonprovisional app and a PCT at the same time?  Or would you file two PCTs, one designating US and one for the others? Or is more likely you bypass PCT altogether and arrange for filing in EPO and/or every country of interest as soon as the foreign filing license is granted?  Does the PPH figure into your decisions? etc.

Thanks in advance!

[ChrisWhewell]

You're right, it is quite an open-ended query and one could write a book on the topic.  One preferred scheme could be to file original applications under the PCT and designate the EPO as the search authority.  In my exp. the EPO often identifies prior art that other offices overlook.  If the technology turns out to be meritorious from a commercial standpoint, as soon as I know that I'd file a US case in some instances, to also learn what prior art the USPTO will identify, and also have an independent patentability search conducted, the idea being to identify all material art so that claims of appropriate scope can be drafted towards obtention of a first office action allowance.  It costs more to do more searching up front, but in the long term it can actually reduce costs by shortening prosecution and also avoiding Festo-based perils.  Carl Oppedahl wrote a nice piece on how one can use the PCT to accelerate prosecution of a US case a while back.  I think he's one of the most brilliant minds of our time.

[ChrisWhewell]

I'd be curious to hear from those of you ......

Here you go:

http://www.oppedahl.com/pubs/pctfaster.htm

[bartmans]

One advantage of starting off with a PCT filing is that you will get a novelty search and opinion as to the patentability within your priority year, while still maintaining an early US 102e filing date (the PCT application, when designating US is regarded as a US filing). Thus, it is not necessary to also file a US provisional application.
Further, you can use this PCT application as a priority filing for a further PCT application (or national filings if that would be your choice) if it is necessary - due to the search report or due to developments in the invention - to file a new text.
The total money spent may be more than the money spent for the usual US provisional followed by PCT, but at least you will be provided with a novelty search which allows you to write a better (final) application.

[bardencj]

Thanks for the ideas.  Carl's article about PCT mentions unity of invention practice as a further advantage, which I can definitely see would be valuable in certain practice areas.

[klaviernista]

Thanks for the ideas.  Carl's article about PCT mentions unity of invention practice as a further advantage, which I can definitely see would be valuable in certain practice areas.

It is only an advantage if the U.S. examiner handling the 371 application actually understands the difference between unity of invention and U.S. restriction practice.  In my experience, this is rarely the case.