Abstract
The Patent Cooperation Treaty (“PCT”) has emerged as a pivotal mechanism for inventors and companies seeking international patent protection. The PCT provides a unified application process accepted by member countries, simplifying, and standardizing the procedural aspects of filing for patent protection in multiple countries. For inventors pursuing patent protection in the United States via the PCT, inventors must submit their application with the United States Patent and Trademark Office (“USPTO”) and choose between one of two primary routes: 1) entering the U.S. national stage under 35 U.S.C. §371 (“371 route”), or 2) filing a continuation or divisional of the PCT application, also known as the “bypass” route.
The decision of which of the two routes to take is far from trivial. The selected route affects various aspects of the patenting process, including filing requirements, translation obligations, restriction practices, examination timelines, patent term adjustments, and overall prosecution strategy. Choosing the most suitable route requires careful consideration of the differences and implications of each approach.
This article will explore the strategic considerations patent practitioners should weigh when deciding between the two routes. Furthermore, it will examine a real-world case study to highlight the potential consequences of choosing the “wrong” route, providing valuable lessons for practitioners aiming to align their strategies with their clients' interests and objectives. Finally, I propose that USPTO identify its preferred national stage entry pathway and implement targeted benefits to encourage more applicants to choose this route.
Recommended Citation
Francisco Tschen,
Pursuing Patent Protection in the U.S. via the PCT: Legal and Practical Implications for 371 and Bypass Routes,
73 Clev. St. L. Rev.
443
(2025)
available at https://engagedscholarship.csuohio.edu/clevstlrev/vol73/iss2/10