Requesting early PCT publication

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The normal timetable for publication of a PCT application is about 18 months after the priority date.  But you can request that it be published early.  What does this cost?  How does one decide whether or not to make such a request? 

If your PCT application has not yet received its International Search Report, then a request that the PCT application be published early will cost 200 Swiss Francs.  This makes sense because in such a case the International Bureau is going to have to do a later publication of the ISR.

But if your PCT application has received its International Search Report, then a request that the PCT application be published early will incur no fee.  This makes sense because in such a case the International Bureau will be doing the same work that it would have done at about 18 months, and is merely doing that work a bit earlier.  

How does one decide whether or not to make such a request?  One factor to consider is that as soon as the publication occurs, it starts making trouble for one’s competitors who might be trying to get patents on related subject matter.  This might be of substantial business value to the applicant.

In the unlikely event that one might be interested in pursuing pre-grant damages from infringers, an early publication would offer an earlier start of the damages opportunity.

Of course another risk is self-collision.  If the inventor were planning to do some more inventing of closely related subject matter at, say, the 17-month date, and if early publication were to take place, then the publication itself could end up being troublesome prior art against that newly invented closely related subject matter.  Regrettably, most inventors are unable to predict when they will do their inventing, and so it is not easy to work out what the risk is of such self-collisions.

Still another factor that might make a difference for some applicants is that the publication itself looks really spiffy and can be a fun document to show to one’s friends and family.  Getting the application published early permits the fun of showing the document to one’s friends and family to happen sooner.

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With one of our firm’s clients we recently prepared and e-filed a request for early publication.  The priority date is April 24, 2019 and so the normal publication date would be October 29, 2020.  In ePCT it is extremely easy to prepare and file such a request — just a couple of mouse clicks.  You can see the results at right.  It will be interesting to see what new date the IB selects for this publication.

In another of our pending PCT applications I tried to do the same thing today (July 20).  This is in a case where the priority date is February 27, 2019, so the normal publication date would be September 3, 2020.  What ePCT gave me is the error message quoted above.  I guess what this error message means is that the usual internal workflow at the IB is such that the request, if granted, would not appreciably advance the publication date.

I was a bit puzzled by this lead time.  It only takes about 3-4 weeks for the IB to yank a case from publication (because of its being withdrawn).  I would have thought that this would mean that the publication workflow is that same 3-4 weeks.  If so, then I would think an early-pub request filed July 20 could lead to an application being published around August 20, which is appreciably sooner than September 3.    But it looks like my guesses about the workflow are not correct.

Have you requested early publication in your PCT applications?  Did you use an ePCT “action” to do it?  What factors did you take into account in your decision about this?  How long did it take the IB to grant your request?   How much time passed before you learned what the new (advanced) publication date would be?  How far in the future was the new (advanced) publication date?  Please post a comment below.

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One thought on “Requesting early PCT publication

  1. I have used this for when clients want to immediately file in countries like China because of a competitor or other issues. We file the PCT, wait until we get the Notice of the Application Number and then immediately file a Request for Early Publication along with the 200CHF. Publication usually occurred a couple of weeks later and we immediately enter China and other countries that it can be more challenging to file a national-phase without having the PCT publication. It has been a couple of years since I last did this, so we did not use ePCT.

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