International and PCT Patent Applications
There are 2 ways to file patent applications in foreign countries:
- File the application directly with the country’s patent office;
- File an international application under a treaty that the country is part of.
International applications under a treaty still require applicants to file an application with individual countries. The benefit is that the applicant can file expedited applications in all countries under the treaty. This means a lot of time and money saved if an applicant wants to file for patents in multiple countries.
Introduction to the Patent Cooperation Treaty (PCT):
The PCT is a treaty is the international treaty in which one international patent office conducts the majority of the processing for international patent applications. The international patent office that processes PCT applications is the World Intellectual Property Organization (WIPO). Currently, 155 countries are members of the PCT. The PCT covers utility patents and not design patents, as international design patents are governed by the Hague Agreement. Furthermore, provisional patents are not available for international filing.
PCT Application Process
An international PCT application will be filed with a receiving office. For US applicants, the USPTO is the national receiving office. The PCT patent application will be sent from the receiving office to WIPO. The applicant will receive a filing date of the date the receiving office received the application. Then, once received by WIPO, the application will be reviewed to ensure it meets the requirements of a full application. Once accepted, WIPO will conduct an international patentability search in a similar way to the USPTO during national examination. Once the search is complete, WIPO will issue an international search report.
If the international search report shows that a patent complies with the general patentability rules under the PCT, the applicant may then file patent applications in individual countries. This is called entering the “national stage”. The benefit of having gone through the PCT process is that an applicant can submit the international search report along with their national applications. This allows the national patent offices to expedite the application processing by relying on WIPO’s search and statement of general compliance. Applications may need to be amended slightly to meet individual countries’ criteria, but the process is still substantially faster than filing the application without an international search report.
Benefits of filing under the PCT
An international application filed under the PCT provides the applicant with a priority date for each participating country. Some countries may not accept a national filing from another country as a priority date. For example, the USPTO recognizes the publication date of a foreign patent as a priority date, but not that application’s filing date. By filing a PCT application, the applicant will receive a date of priority as of the filing date of the application. This extends the applicant’s protection of their invention.
- Reduced time and cost at scale
Generally, a PCT application can enter the national stage after 18 months from the international filing or 30 months from the date of a priority claim. An application filed directly with the USPTO would be processed faster than a PCT application. However, if an applicant wants to file for a patent in more than 1 or 2 countries, then the applicant can save time and effort in complying with all of the different country’s filing rules and procedures by filing with WIPO under the PCT. Reduced processing time and compliance means reduced expenses and attorney’s fees. This is why international applications are great for patent protection on a large scale.
When should you not file a PCT application?
If you are focused on patent protection in only 1 country, you should not file an international application. If you are focused on 2 countries primarily, but are interested in the potential for protection in other countries, you should probably wait to file an international application. A PCT application is best for inventors who file for patents in 3 or more countries. A national application can issue faster than a WIPO application. Furthermore, a WIPO application is still a second application, with similar costs and procedures to national applications. Instead of filing internationally, then filing 2 national applications, you could get a patent attorney from each of the 2 countries and file national applications concurrently. This would be the fastest and most cost-effective method for obtaining patents in 2 countries. However, if there is a good chance you will want to continue obtaining patents in more than just those 2 countries, I would start with the PCT application.
Evaluating your PCT options with a US Patent Attorney
Filing a PCT application is a big step that carries international legal effect. It is also a decision to take on a long-term investment and the expenses that come with it. To determine if an international patent application is right for you, consult with an experienced patent attorney. I am a patent attorney who works with PCT applications. As a thank you for your time reading this article, I offer you a free consultation to discuss your potential PCT application.
I started my law firm straight out of law school as a business law firm in Ohio. I went back to school and acquired my patent license while growing my firm. After practicing law for 4 years, I decided to transition my practice into exclusively patent law. Then, I decided to transition out of solo practice and join a team of attorneys and paralegals. Now, I run the business law and patent law departments of Doucet Law.