Q: When I file for a PCT, how long will it take for an examiner to review and issue an office action?
Being a startup, I need to extend my funds as long as possible. I would like to know how long after I file the PCT that an examiner would issue an office action so I can prepare for this fee. I understand its between the PCT filing till 18 months where I need to selection which country, but is there an average time? If not an average time, what was the earliest you have received an office action for this international patent.
A:
If you file a PCT application in February 2018 (without claiming priority to an earlier application), the International Search Report and the Written Opinion will be issued by November 2018 (PD+9mo). If the PCT application claims priority to an earlier application filed a year earlier (February 2017), then the ISR&WO will issue about June 2018 (RSC+3mo).
A couple of points:
- As with all patent prosecution, the major portion of your costs will be your attorney’s fees.
- Although the costs are not very predictable, the deadlines are, because most deadlines are measured from the priority date (“PD”, typically the first application date), and not when the ISR & WO are issed. Therefore, it does not matter when you get your ISR & WO, you will have until PD+16mo to file Art. 19 amendments (or ISR&WO+2mo, whichever is later), and you will have until PD+22mo to file a demand. Similarly, you’ll have until PD+30mo or PD+31mo to file national phase applications.
A:
Another point to consider is that you do not have to respond to the International Search Report and Written Opinion at all. You can address these issues by amending your claims when you file the national stage applications at month 30 or 31 after the priority date.
If the PCT search report raised legitimate reasons why your claims are not allowable, then you need to consider whether you can overcome these objections later as they may come up again when you get office actions in individual countries.
There can be advantages to responding to the PCT objections and getting the claims approved at the PCT stage as that will make your application eligible for expedited handling in many patent systems under a program called the Patent Prosecution Highway.
But as your question is how long before you need to respond to a set of PCT objections, the answer is that you can choose to not respond at all.
BTW -- it is misleading to call a PCT application an international patent. It is a front end for 152 patent systems but you cannot sue someone over your published PCT patent application no matter what the PCT examiners think of your claims.
I hope this helps.
Kevin E Flynn
1 user found this answer helpful
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