There are lots of options for filing patent applications in both the U.S. and foreign patent offices. For a U.S. resident, those options include:
- File a U.S. application and the desired foreign applications simultaneously;
- File a U.S. application and then later (within 1 year) file the desired foreign applications;
- File a foreign application and then later (within 1 year) file an international (PCT) or U.S. application;
- File a U.S. and then later file a PCT that claims priority to the U.S.;
- File a U.S. and PCT simultaneously;
- File a PCT and then later file in the U.S. as a National Stage of the PCT; and
- File a PCT and then later file in the U.S. as a Continuation of the PCT.
Walking down through these options, options A and B typically work best when protection in only a few (typically less than 2 or 3) foreign countries is desired and funding is readily available.
Options A, B, and C also can be beneficial for those countries that offer prompt examination (e.g., UK, Australia). Option C can make sense when none of the inventors is a U.S. resident. Finally, options B, C, and D can be a good route if funds are initially scarce.
Unless steps are taken to expedite U.S. prosecution, it typically takes 2 years or more until a U.S. application is examined by the USPTO. So, if option D or E is taken, by the time the PCT Search Report is received, there typically is still time to amend the U.S. claims before examination, thus potentially speeding up the U.S. examination process.
On the other hand, if funds are initially scarce, but protection is desired in several (typically 3 or more) foreign countries, options F and G can be favored, since most of the costs (i.e., National Stage filings and any accompanying translations) are deferred for at least 18 months, and potentially up to 31 months.
The 2025 World Intellectual Property Indicators report published by the World Intellectual Property Organization (WIPO) revealed that in 2024, China’s patent office received a whopping 49.1% of the world’s patent applications – up from 34.6% in 2014. Topping the list of countries with the most in-force patents in 2024 were China, U.S., Japan, and Korea.