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Is it possible to file with PCT without filing for a national application first? My search on the web so far indicates yes, but the recommended route is to file a national/regional application first before proceeding to PCT within 12 months (ex. this link from WIPO http://www.wipo.int/export/sites/www/pct/en/seminar/basic_1/timeline.pdf). What are the disadvantages of proceeding with a PCT filing first? I am assuming that the priority date in this case would be the PCT filing date.

  • Are you aware of the monetary costs of PCT applications? – DonQuiKong Jan 24 '18 at 16:23
  • In the ball park of $2000.00 mostly for the international searching fee? – Frustrated_Student Jan 24 '18 at 17:09
  • around 2,5k€ yes. That's probably one of the biggest reasons. I'm not sure if there are others. – DonQuiKong Jan 24 '18 at 17:37
  • It might be more simple to file a national/regional one and obtain a filing date, thus giving rise to a priority right (PCT has fundamental differences with EPO formalities, for example). In your answer, what is the fate of the national/regional application? You only want to claim priority from it or you intent it to be further prosecuted? – chempatent1981 Jan 24 '18 at 18:10
  • I haven't filed a national application yet, but am thinking of going straight for pct and then nationalising in the markets of interest. In that case, the priority date would be the filing date of the pct? – Frustrated_Student Jan 25 '18 at 1:45
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If the first application you file is a PCT application its filing date will be the priority date for everything that flows from the PCT filing. You can take advantage of that priority by entering national stages in select countries (within the 30 or 31 month deadlines). There are a few countries that are not contracting states with the PCT - Argentina and Taiwan, for example.

As is mentioned in multiple comments, a PCT application is more expensive than a national application and there are some pitfalls that can make it even more expensive. If you are planning on doing this by yourself I would recommend filing it as a national application. An example of a PCT gotcha is that if you chose the EPO as your ISA, they can let you know that they do not search in the subject matter area of your claims and, "thank you we will keep your 2k search fee".

  • Do you have a source for being able to file a Convention application using a PCT application as priority? I've just never come across the situation before (since it's a pretty rare approach), and I couldn't find any clear reference to it in the MPEP or the EPO guidelines. – Maca Jan 25 '18 at 19:13
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    If you do it yourself screw the pct, get an attorney and file in your country only. You'll have good protection in one country instead of bad protection in a few for the same money. – DonQuiKong Jan 25 '18 at 20:00
  • I might not be correct - my logic is that a PCT application is a collection of national applications and therefore is a filing in many Paris countries. However, I have not done it and will delete it from my answer. Explicitly does work in EPO 1.3 Validly claiming priority "The words "in or for" any member state of the Paris Convention or member of the WTO, referred to in A‑III, 6.2, mean that priority may be claimed in respect of a previous national application, a previous European application, a previous application filed under another regional patent treaty or a previous PCT application. " – George White Jan 25 '18 at 20:22
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Question - if the PCT filing date is the first filed.

Now I am filing in other PCT countries and I have 30 months from the priority date -I understand that. But If I want to claim priority to the PCT and file in Argentina or Tawain I only have 12-months to file??

I'm confused

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    Please post this as a new question, not in the spot for an answer to your previous question. – George White Jul 24 at 21:53
  • IMO there should be mechanism to relocate such contributions to its correct place (probably by reviewers) with auto generation of instruction (how to ask a question or where to answer) depending upon situation. – AD Adhikary Jul 25 at 23:32

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