TAKEAWAY: An applicant has several options for filing an international patent application.
Once an applicant has decided to file an international application under the Patent Cooperation Treaty (PCT), the applicant typically has options as to where and how to file.
Where to File: Depending on nationality and residency, an applicant may have several options available for filing an international patent application. Patent offices that can serve as receiving offices to accept PCT applications and forward them to the World Intellectual Property Organization (WIPO) for further processing include national patent offices, such as the U.S. Patent and Trademark Office (USPTO), and regional patent offices, such as the European Patent Office (EPO). An applicant also can file a PCT application directly with the International Bureau (IB) of WIPO. For example, U.S. applicants can file PCT applications in the USPTO as a receiving office for WIPO, or with the IB of WIPO directly. It is the nationality of the applicant(s), rather than the nationality of the inventor(s), that dictates the competency of a patent office to accept and process PCT applications on behalf of WIPO.
How to File: If a U.S. applicant opts to file the international patent application in the USPTO, the applicant has a few options as to how to file, namely, electronic filing (e-filing) or paper filing.
The most common filing option is e-filing. This is done through the USPTO’s Patent Center interface (which replaced the USPTO’s EFS-Web system as of November 15, 2023). The applicant can upload WIPO’s standard transmittal forms or can use ePCT to populate application data for upload. ePCT is a secure browser-based system that allows applicants to provide the relevant applicant details to be filed in the USPTO via a .zip file. One of the benefits of ePCT is the ability to validate data and highlight errors for correction prior to submission. Fees are paid to the USPTO when the application and the .zip file are filed in Patent Center. The ePCT system also allows applicants to manage applications, such as monitoring time limits for relevant actions, and entitles applicants to certain fee reductions. Filing fees are slightly reduced by using ePCT.
Paper filing, although much less common, is still available to applicants. Transmittal forms may be mailed to the USPTO or delivered in person to the USPTO’s Customer Service Window in Alexandria, Virginia. Paper filing requires payment of a non-electronic filing fee. To ensure that the filing date is the date of mailing of the application, applicants should use a Priority Mail Express® mailing label. Failure to use the correct mailing address or the Priority Mail Express® mailing label will result in the filing date being the date the USPTO receives the application, rather than the mailing date.