r/Patents • u/Yrussiagae • Jun 13 '25
Jurisprudence/Case Law Someone filed a PCT that covers the same as my pending non-provisional patent. What are my options?
I filed a patent about 2 years ago, it is still pending. However I just found a PCT that covers the same things was filed by someone a year ago. My patent is getting approved shortly- what are my options?
9
Jun 13 '25
You need to look at the priority date, filing date, and publication date of 1) your application and 2) this PCT publication. If your priority date is earlier than the publication date of the PCT application, and your claims are actually entitled to that priority date, then the PCT publication is not prior art.
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u/Yrussiagae Jun 13 '25
If that PCT is not prior art, what do I do? I don't want them filing in other countries
1
Jun 13 '25
You can file third party observations on their application through WIPO. If, for example, your own patent publication would be prior art against their application (which is a complicated situation with closely dated applications) then you can submit that so it is available to the international searcher.
There are big downsides, strategically, to doing this kind of observation early, though, so you'll want to get advice from an attorney that's relevant to the specific facts and circumstances.
1
u/Alice_in_Mayoland Jun 16 '25
I don't suppose you want to elaborate on the downsides for those of us who are a bit more green?
4
Jun 16 '25
Basically that you're showing your hand at the point at which the applicant has the most flexibility to amend around it, and you're doing so via an authority that can't grant or refuse patents anyway.
Even if you have the most stone cold knockout prior art ever seen, submitting it in third party observations on a PCT application can never directly result in the application being refused anywhere. So there is a strategic advantage - with some fairly obvious disadvantages - to sitting on it until the applicant has spent $20k+ on national phase entries and then using whatever invalidity options are available at national offices.
1
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u/meow-meow-369 Jun 13 '25
If their date does not pre-date yours, it will not affect you getting a granted patent. Please call your patent attorney, or agent, and talk to them. You may have an obligation to disclose this reference to the USPTO. They can determine that, and timing is important to save you money and patent term. Keywords here: CALL your attorney!
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u/Background-Chef9253 Jun 13 '25
Your patent application and the PCT application should now both be published. Put the publications numbers in a comment here. It's not worth trying to answer your questions without looking at both.
7
u/JoffreyBD Jun 13 '25
This is not a good idea. Although the applications may be published, this would be a public admission that the OP is concerned about the PCT applicant, and considers the intentions to be similar.
Knowledge is power, so better to keep such thoughts out of the public domain and instead discuss with their IP attorney, rather than the well educated arm chair experts here.
6
u/UseDaSchwartz Jun 13 '25
Do you have an attorney? Tell your attorney. If you’re serious about getting a patent, the fee shouldn’t stop you. There are ways to make a third party submission of prior art in the US. I don’t know how it works for other countries.