Patent Protection Outside of the U.S.

By Haim Factor Wednesday, December 29, 2010

Previously, we discussed patent procedures in the U.S. The title of this article already hints that filing a patent in the U.S. alone does NOT give the inventor protection in another country. Whereas, years ago, patent protection in another country was not a concern for most American inventors, the global marketplace has changed that picture dramatically. The only way to obtain patent protection outside of the U.S. is to file in the country or countries where you want protection. There is no such thing as an international patent.

That being said, there is a method of filing internationally, which can reserve your rights to a filing date for other countries.

What is a PCT patent application?

Reserving a filing date, also called a priority date, is usually very important for most inventors because most countries grant patents based solely on the priority date. This method of filing internationally is called PCT—or Patent Cooperation Treaty. The U.S., as well as about 150 other countries worldwide are members of the PCT.

A patent filing in any country is frequently called a “national phase” or “national stage” filing. Generally speaking, a PCT patent application serves as an “umbrella” which can serve to maintain priority of an initial national phase filing (such as a U.S. filing) for future national phase filings of the same or similar patent application other countries.

According to PCT rules, following an initial national phase filing, you have up to 12 months in which to file a PCT application claiming priority from the initial national phase filing. Once the PCT application is correctly filed, you then have up to an additional 18 months in which to make national phase filings in other countries. In other words, the PCT mechanism affords the inventor up to a total of 30 months time in which to decide which, if any, additional national phase filings to make worldwide—all while preserving his priority date.

Advantages and Considerations for a PCT Application

The major advantage of a PCT application is as explained above—maintaining the priority date and having 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 U.S. “Office Action”) which can give useful feedback to the inventor regarding patentability of his idea.

However, the decision to file a PCT and subsequent national phase applications claiming priority must take into account PCT filing fees and PCT procedures.  PCT filing fees can easily exceed $2,000.

No matter what, if you wish to file in other countries—within the PCT framework or outside of it—take into account that other countries’ national phase filing fees can also become quite significant. Finally, in some cases, a given national phase filing could involve prosecution (and attorney costs) distinct from the U.S. 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: https://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.

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