The two most common patent applications filed with the United States Patent and Trademark Office (USPTO) are the non-provisional patent application, and the international application filed under the provisions of the Patent Cooperation Treaty. These two patents are often referred to respectively as NPAs and PCTs.
There are several differences between the two, and in different contexts, one or the other may have advantages specific to your needs.
For those filing a patent for business purposes, oftentimes the biggest concern is ensuring patent protection overseas.
The average inventor files an NPA in order to obtain a patent in the United States. This is single most common type of patent filing—for inventors looking to start a business focused on the U.S. market, and thus looking to secure their I.P. accordingly.
But for those who are considering entering foreign markets, filing an NPA puts them in a time crunch. According to the provisions of the Paris Convention for the Protection of Industrial Property, applicants who file a patent in one of the ‘contracting states’ (the United States being one of those) have one year to apply for a patent in other contracting states. Filing a PCT application when this one-year deadline is drawing near is a great way to reset the clock and get the time needed to file patent applications in any countries where a patent is desired.
Occasionally, inventors will file a PCT application in lieu of an NPA in order to get faster examination of their claims. This is because this procures faster feedback on what is patentable, and expedites processing of a subsequent NPA in the United States.
The priorities of inventors can differ significantly from case to case—is time of the essence, or do you need to maximize flexibility in anticipation of extensive amendments?
There is no set timeline for a response from the USPTO on NPA filings, though the patent term can be adjusted accordingly if they’re excessively slow to respond.
But many inventors need feedback sooner rather than later. As noted above, a PCT application is a means of getting feedback in a timelier manner. In fact, filing a PCT application guarantees a response from the USPTO, in its capacity as an international search authority, within 18 months of the priority date of the international application.
But what if you think you’ll need to make changes to your application? You can only amend an international application once and receive a substantive response. The requirements for drawings in a PCT application are much more exacting and particular. In addition, the abstract requirements for a PCT are actually in direct contradiction to NPA abstract requirements.
NPAs are an attractive option for inventors who are still nailing down the details, as you can amend an NPA many, many times. I wouldn’t say that you can make an unlimited number of changes, but NPAs definitely offer much more flexibility.
But if you ultimately plan to file an international application, it may be best to take the time to properly format that application first, and then make changes as needed to a subsequent non-provisional application. Consulting with an experienced patent attorney can help you determine what strategy is best for you.