International Patent Application Filings
Most countries outside the United States offer some form of patent protection. While there is no single “international” patent which covers the whole world, or even large parts of the world, there are still avenues for foreign protection. The Paris Convention is an international treaty signed by most countries around the world that gives a type of reciprocity to patent filings and makes international patent application filings much easier.
For US applicants, there are primarily two routes for obtaining such foreign protection: 1) filing an international patent application under the Patent Cooperation Treaty, also called a “PCT application,” and 2) filing individual applications directly into foreign countries in which protection is needed.
Under the Paris Convention, a patent application first filed somewhere in the world sets a one-year deadline for filing additional patent applications elsewhere in the world. Thus, when US applicants file a provisional or non-provisional application, they have one year to file applications in other countries which claim priority to that US application. This rule governs both centralized filings through the PCT and individual filings on a country-by-country basis.
A PCT application is an international patent application filed under the Patent Cooperation Treaty. While it cannot mature into an international patent, it does start a process through which an applicant can obtain patent protection in many countries. Most countries have signed onto the PCT, with the notable exception of Taiwan.
A PCT application is filed with a Receiving Office, usually the applicant’s home country office or WIPO, the centralized administrative body for the PCT. The application is then searched and examined by one of various International Searching Authorities. The selected ISA develops a Written Opinion, which becomes the basis for an International Preliminary Report on Patentability. This is all part of the “International Phase” of the PCT application, because it proceeds based on internationally-agreed standards and without dependency on any local laws. During the International Phase, the patent applicant can amend the claims or present argument against the Written Opinion in an attempt to place the PCT application in better condition before the International Phase ends.
The International Phase ends usually at 30 to 31 months after the priority date, which is the filing date of the priority application. Before the International Phase ends, the applicant must file individual patent applications in whatever countries it desires patent protection (with Taiwan being an exception). Filing those individual applications begins the National Phase in each country. At that point, the local patent office – Japanese Patent Office, German Patent Office, EU Patent Office, whatever the case may be – receives the PCT application and any amendments to the application and processes the application according to its local rules. For example, you may file a European patent application or Unitary Patent with the EPO to pursue patent protection in European countries; if so, the EPO will search and review your application under EPC rules.
PCT applications can help delay decisions and costs associated with national entry, and they can also save money by allowing the applicant to receive examination and respond to that examination once in a centralized process.
As an alternative to a PCT application, or sometimes in addition to a PCT filing, an applicant cam make individual filings directly into foreign countries. Here, local counsel must be contacted and instructed to filing an application. The application is then submitted and reviewed according to the national laws in that country.
Direct filings avoid the costs associated with filing a PCT application, but they must be made within 12 months of the priority application. Moreover, because examination occurs only within the national patent office, an applicant can find itself fighting the same issues in several countries, multiplying the cost of prosecution. However, where an applicant only wants to file one or two foreign country applications, a direct filing may be the best option.
There are numerous other factors that can affect the decision whether to file a PCT application or direct applications into foreign countries. That decision is highly individualized based on the patent applicant, the budget, the types of protection available, the timing, the prosecution of the priority application (if there is a priority application), and a number of other concerns. In short, filing for international patent applications is complicated, difficult, and administratively burdensome. Should you have any questions about it, please contact patent attorney Tom Galvani at 602-281-6481.