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International Patent Protection

On 01, Jun 2013 | In | By Andrew McAleavey

International Patent Protection

International Patent Protection

The U.S. is a part of several treaties that allow U.S. patent applicants to file patent applications abroad and get the benefit of their U.S. filings. (Foreign patent applicants get the same benefits by filing their applications in the U.S.) In short, a U.S. patent applicant can pursue patent protection virtually everywhere in the world, but the process is expensive, and the deadlines are strict.

There are two routes for foreign patent protection, direct filing and the Patent Cooperation Treaty (PCT). In either case, an application or applications must be filed no later than one year after the initial U.S. application was filed. (For design patent applications, the treaty deadline is six months.)

1. Direct Filing.

Direct filing is the simplest route to foreign patent protection. By the one-year deadline, the U.S. patent application is sent to patent attorneys in whichever countries the client wishes, and those attorneys are instructed to file the patent application in their countries. The attorneys in each country may need to translate the application into the local language and take other steps in order to file it.

Although direct filing is the simplest route, it also involves the largest up-front cost. Since patent rights are usually lost in any country where the client chooses not to file, direct filing is usually best for clients who know that they have business interests only in a few countries, and those countries are unlikely to change over time. For example, a company with consistent business interests in Canada, and nowhere else, might be a good candidate for direct filing in Canada.

There are a few countries for which direct filing is the only available route for patent protection.

2. The Patent Cooperation Treaty (PCT)

The PCT is an international treaty that simplifies the process for getting patents in other countries, and, at this point, most industrialized countries in the world are PCT members.

At the one year mark, instead of filing individual applications in foreign countries, the patent applicant files a single international patent application under the PCT. That application is forwarded to international authorities in Geneva, who coordinate the rest of the process.

As a part of the PCT process, the application will be searched and examined by a patent examiner at a patent office of the applicant’s choice. Depending on the nature of the invention, the applicant can choose to have the application searched and examined in the U.S., South Korea, Europe, or Australia, to name a few. The search and examination provide an initial read on whether or not the applicant is likely to be successful in obtaining patent protection. The PCT also provides opportunities for the applicant to alter the patent application in response to the search.

However, the most important thing the PCT provides for most applicants is time. Once a PCT is filed, applicants have 30 months from the initial U.S. filing date (31 months for some countries) to decide where patent protection will ultimately be pursued. If the PCT application is filed at the one-year mark, that means an additional 18 months before the heavier costs of patent protection set in.

At the 30- or 31-month mark, the applicant must take steps to enter the “national stage” of the PCT application in whichever countries are desired. This part of the process is much like direct filing: a local patent attorney in each country of interest will need to translate the application (if required) and take steps to complete the filing.