File PCT In The U.S. Receiving Office

The PCT has several receiving offices around the globe, including one in the U.S. for U.S. applicants, one in Europe for European applicants, one in Japan for Japanese applicants, and so forth. But most countries don't have their own PCT receiving office, and a provision has been made for a citizen or subject of any PCT country to file in the main PCT office in Geneva.

The various PCT receiving offices are responsible for conducting their own patentability searches. Thus, the U.S. patent office, which is the PCT receiving office in the United States, conducts patentability searches for PCT applications filed with that office. The search is supposed to be an "international type" search, and is supposed to be quite thorough.

But some attorneys believe that the European Patent Office, which conducts patentability searches for the main PCT receiving office in Geneva, does a better job of searching than the U.S. patent office. Those attorneys are sometimes persuaded to file the PCT application in the Geneva receiving office, even though the applicant lives in the United States. The question is whether or not that is a good idea.

In the past, that was generally a bad idea. The Geneva receiving office applies EPO laws and standards, and is thus unnecessarily restrictive relative to U.S. practice. For example, the Geneva receiving office routinely rejects "methods of doing business" claims, and computer software claims. The Geneva receiving office is also quite insistent on limiting the scope of the claims to the scope of the examples set forth in the Specification. All that does is provide ammunition for the U.S. patent examiner to reject the claims at the U.S. national phase. I have also found that the EPO examiners (which conduct the searches for PCT Geneva) are much less receptive than the U.S. patent examiners to informally talk through the claims issues.

There are other advantages of filing in the US. One is that the PCT considers the application to be filed on the day it is mailed using the Express Mail procedure. PCT Geneva takes just the opposite approach, and only considers the application to be filed on the day it is actually received in Geneva. An applicant can fax file the application, but the applicant takes the risk that the fax doesn't go through correctly. In any event, filing in Geneva reduces the filing window because Geneva is six to nine hours ahead of most cities in the United States, and the application is not considered received until the fax actually goes through.

For technologies other than Internet-related software and business methods, and methods of treating humans, the best strategy may well be a hybrid choice — filing the PCT application with the U.S. Receiving Office (US/RO), but designating that the search be done by the EPO. In many ways that strategy provides the best of both worlds.