Service

PCT International Patent Application

PCT International Patent Application

For a PCT filing, you must have a fully complete formal patent application legally written to proper attorney standards (e.g., proper specification, claims, and formal drawings), which is what the above quoted service assumes you provide us for our filing work.  Our base PCT application service does not include any legal drafting work.

Note that the PCT office does not accept incomplete/informal writeups (like provisional patent apps).  Our above quoted fee is a flat-fee for us to properly prepare, file, and handle the PCT filing process based on your US Utility (or similarly complete with full set of claims and formal drawings) patent application filing.  Otherwise, upon request, we would have to separately quote you to additionally prepare a formal patent application (legal drafting) to US/PCT legal standards.

Currently, we prefer at least 1-3-week lead time, but can do rush jobs as fast as 1-3 days  (yet we prefer not to push speed when not necessary).

Unless otherwise agreed upon in writing, we would like final payment to be honored by our bank at least 2 weeks prior to any PCT filing deadline.  All PCT official fees due should likewise be received 2 weeks prior to any filing deadline, or instruct us to file without PCT fee payment (which is our default assumption).  If less than 2 weeks is given, rush fees may apply or we work on a "best efforts" basis to meet the deadline.  You should verify your filing deadline in your patent application filing receipt.

As you may know, to preserve your international filing rights, you must file a foreign or international Patent Cooperation Treaty (PCT Patent) application within 1 year from your Utility (or PPA if filed) filing date.  If the invention has not been published (which is normally done by 18 months after the provisional filing date) then you may still be able to file a PCT without the expired priority claim.  Otherwise, you may be prohibited from patenting the corresponding invention internationally.  The one year deadline is measure from the filing date indicated on your PPA filing receipt from the USPTO if you filed one, or the Utility.  You can get more info about the PCT on our page (Click Here).

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf

Filing Utility or PPA applications starts the 1 year Paris convention clock ticking, which is the time given to file internationally. So, if you wish to preserve your international filing rights, you must file a foreign or international PCT patent application within 1 year of filing your Utility to claim benefit from your earlier Utility filing date.  Otherwise, you may be prohibited from patenting the corresponding invention in some countries.  That is, if you believe that your innovations corresponding to the filed US application(s) is/are important enough to secure foreign patent protection for, you must do before the 12 month deadline.  If the 12 month deadline is missed, yet you have never publicly sold or disclosed the invention, and it has never been published (e.g., normally 18 months from PPA filing), then normally you could still file a PCT application without problems, except that you would lose your earlier (expired) priority date.  You should be made aware that foreign countries follow a "first to file" system, so losing the earlier priority date could turn out to seriously harm or vanquish your foreign patent rights if intervening prior art is found which blocks your foreign patentability.  Please refer to my postscript for other important aspects of the PCT process and getting started.

We require our above quoted flat-fee to prepare, file, and manage the filing process for your PCT patent application.  Note that by law you have up 30 days from the PCT application filing date to pay all PCT fees.  Our base flat fee assumes you have a US mailing address because by default it is configured with you receiving the USPTO correspondence and emailing/FAXing it to us- add above quoted option to the base fee for us to receive it and forward it to you.  Of the flat-fee, 50% is a non-refundable general retainer and the balance 50% is the pre-paid flat-fee portion, which includes a $250 new case setup fee.  Moreover, because high page counts of drawings and/or description (esp. > 30 total pages) will run up your cost throughout the PCT and foreign patenting process, we strongly recommend that you reduce the number of drawings and/or description down to the absolute minimum needed to show the key, innovative parts of the invention this is being claimed as never done before.  Similarly, many countries, such as China, do not allow you to amend/cancel claims to reduce their high filing fees; thus, we strongly recommend that you reduce the number of claims to the minimum needed (ideally up to 15) to achieve your core foreign patent protection goals, favoring more valuable independent claims and removing less valuable dependent claims.  Usually, claims counts over 20 will cause you a very high official fees and/or prosecution fees costs during future national phase entry & prosecution.

PLEASE NOTE THAT NOT ALL COUNTRIES ARE PARTY TO THE PCT, and you may not be eligible to file a PCT at all or it may not cover your desired countries, whereby in either case you would have to file a foreign patent directly in such non participating countries before 1 year after any US (or foreign) patent application filing.  You should validate that your countries of residence and interest are PCT members, as we may not notice non-members until filing time, if at all- so you risk fees paid and/or losing foreign patent rights.  Here is the list of countries that are party to the PCT and their country codes:

For example, States which are not PCT Contracting States include: Afghanistan, Argentina, Bangladesh, Bhutan, Bolivia, (Plurinational State of) Burundi, Cambodia, Cabo Verde, Democratic Republic of the Congo, Djibouti, Eritrea, Ethiopia, Fiji, Guyana, Haiti, Iraq, Jamaica, Jordan, Kiribati, Lebanon, Maldives, Marshall Islands, Mauritius, Micronesia, Myanmar, Nepal, Pakistan, Paraguay, Samoa, Solomon Islands, Somalia, South Sudan, Timor-Leste Tonga, Tuvalu, Uruguay, Vanuatu, Venezuela, (Bolivarian Republic of) Yemen.

If you need/desire to file directly in any country we can assist you in doing so at the most competitive rates. If so, please provide us the list of countries and reply to this email with a request for quote (for fastest response times, please put ‘RFQ’ in the subject line).

Please also take note of the following: If you requested non-publication of your US Utility patent, despite the fact that you later seek international/foreign patent filing (which, as mentioned in our original instructions is not allowed under US patent law), you must immediately rescind your non-publication request in the hopes of preserving your international patent rights.  This should have been done upon filing your Utility, but no later than before filing the PCT or any foreign patent.  The USPTO will charge publication fees (usually around $300) and we charge a prep./filing fee of $200 to handle this. 

If, after filing a non-publication request, a US patent applicant subsequently files an application directed to the invention disclosed in the attached application in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the United States Patent and Trademark Office of such filing within forty-five (45) days after the date of the filing of such foreign or international application. Failure to do so will result in abandonment of the US patent application (35 U.S.C. 122(b)(2)(B)(iii)).

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1)     Configure the above shopping cart options (if any) according to what best fits your situation, goals, and/or budget.   (you may always edit your cart to make any changes- see below for details)

a)     The service item may have a text entry field named "Please provide any Special Instructions...", where you should enter any specific guidance or information that may be helpful for us to properly process your order (e.g., any case number we've assigned, deadline situations, how this order relates to any other orders, etc.)

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2)     Click the "select service" button to put the service item you configured into your shopping cart. You will notice shopping cart at the top right of the page, which indicates how many items it currently contains. Click that shopping cart icon anytime you want to see what items are in your shopping cart, and you'll notice a pencil icon on each item which enables you to go back and edit the item, and save your edits by again clicking the "select service" button.

3)     Click the "Checkout" button to begin the checkout process.  On the Checkout page, enter your email address, client status, and PoC information for the legal service you are ordering. Then click the “next intake page” button to proceed to the payment indication page.

4)     Make your payment off-line (i.e., not through our website) using one of the methods specified in the postscript of quoting email. Currently, online payment methods through our website are not implemented yet.

5)     After you made your payment off-line, return to the above payment page on our website where you will specify how much you paid, by what means, and some kind of transaction receipt/info for us to research and match it up to your order to approve it.

a)     NOTE: Most of our services require 100% prepayment of the quoted fee; however, if our emailed written quote indicates a lesser prepayment amount then instead of our standard full prepayment policy for reduced fixed-fee work, you can take advantage of a reduced minimum down payment fee (e.g., 50% of the quoted fixed-fee, plus any rush fee quoted) to start patent work on each case. The remaining fees are later due at least upon our completing the 1st draft of the ordered legal service for your review/revision and/or our filing.

b)     If you paid using methods like PayPal/Zelle/check/money order/bank wire/bank deposit/ etc., then during the above linked checkout process select the "off-line" payment option, which will ask you for which "off-line" payment means you use and a copy of the transaction information so that we may manually confirm and process it to credit it to your account.

6)     After you register your payment per the above, our system will guide you to our online new case intake forms to gather your administrative information for this new patent case (e.g., POC, contacts, inventors, assignees, work request details, service agreement, etc.).

7)     You will be emailed a link to proceed to our secure client portal dashboard to securely submit your materials, documents and instructions for our legal work.

8)     Our team reviews all your submissions and works with you to validate/improve anything needed for us to properly do our legal work.

Of course, if you have any questions not yet answered, or otherwise require any help, please do not hesitate to contact us. We will happily assist you.