There is no such thing as an international patent.
In previous blogs, we discussed patent procedures in the US. The title of this blog already hints that filing a patent in the US alone does NOT give the inventor patent protection in another country. Years ago, patent protection in another country was not a concern for most American inventors. However, the global marketplace has changed that picture dramatically. The only way to obtain patent protection outside of the US is to file in the country or countries where you want patent protection. There is no such thing as an international patent.
What is a PCT patent application?
That being said, there IS a method of filing an international application which can enhance your rights regarding a filing date for other countries. The initial patent application filing date is also called a “priority date”. The priority date is frequently important for most inventors because almost all countries grant patents according to the priority date. An international patent application is also called PCT—Patent Cooperation Treaty. The US and over 150 other countries worldwide are members of the PCT. Filing a patent application in any country is called a “national phase” or “national stage” filing. A PCT patent application serves as an “umbrella” which can serve to maintain priority for initial national phase filings (such as a US filing) for additional national phase filings in other countries.
Once a PCT application is correctly filed, the inventor then has up to 30 months from the priority date in which to make national phase filings in other countries and still claim/retain the initial filing date. In other words, the PCT framework affords the inventor up to a total of 30 months’ time in which to decide which, if any, additional national phase filings to make in other countries—all while preserving his priority date.
Another important and well-known international accord is the “Paris Convention”. This accord allows an inventor up to 12 months following the priority date, to file other national phase applications and/or a PCT application—and maintain the priority date. Comparing PCT to the Paris Convention, it is clear that PCT gives an addition of 18 months to the Paris Convention 12 months.
Advantages, disadvantages, and considerations for a PCT application
A major advantage of a PCT application is as explained above—maintaining the priority date for up to 30 months to make national phase filing decisions. Other advantages include a PCT examination and search report (which is roughly similar to a US “Office Action”) which gives useful feedback to the inventor regarding patentability of his idea.
However, PCT filing fees can easily exceed $3,000—and this expense should be taken into consideration.
In many cases, we have found that expedited or accelerated prosecution within the US can allow an inventor to obtain a patent in the US within the Paris Convention 12-month period, thereby allowing him to make additional national phase filings within the same 12-month period. In this way the inventor may be able do without an expensive PCT filing. We will publish a separate blog about US expedited/accelerated prosecution.
Additional costs of foreign filings
Whether you wish to file in other countries—within the PCT framework or outside of it—take into account the fact that other countries’ national phase filing fees can become quite significant. Finally, in most cases, each national phase filing typically involves prosecution (and attorney costs) distinct from the US prosecution.
Most inventors proceeding with a PCT and/or foreign national phase application turn to a registered patent attorney or patent agent, who in turn work with foreign associates for the subsequent national phase filings.
An excellent resource for more information on this subject can be found at the PCT website: http://www.wipo.int/pct/en/ .
Haim Factor is a registered USPTO Patent Agent with nearly a decade of experience in patent drafting, prosecution, and overall IP strategies. His clients take advantage of his rich experience of over 25 years in business development of a wide array of B2B and B2C products and his experience with intellectual property protection both within the US and internationally.
He can be contacted at: firstname.lastname@example.org and at 302.200.1424.