Is there only one way to get international patent rights?

No, there are multiple ways to obtain foreign utility patents. While there is no such thing as an international patent, there is an international patent application called the PCT application. Eventually, you still will need to file separate utility patent applications in each desired foreign territory.

In most cases, you must eventually file an individual utility patent application in each desired foreign country, except for Europe which allows for a single regional patent application. For European countries, you may file a single patent application with the European Patent Office (EPO).

When must a foreign or international patent application be filed?

For utility patent applications, the foreign filing deadline is one year from the priority date. For most US applicants, the priority date is the filing date of the earliest US utility patent application, which may be either a provisional or nonprovisional application. The paths to a final destination in a foreign country may differ.

What are my foreign filing options?

To obtain a foreign patent, you must eventually file in each desired country or region. Europe allows for a single regional application to be filed with the European Patent Office (EPO). When an EPO application is allowed, it can then branch off into each desired European country.

Foreign filing options for utility patents differ in timing, which can significantly conserve cash flow:

  1. File directly in each desired country within 12 months of the priority date;
  2. Delay the filing in each desired country up to 30 months of the priority date (i.e., buy an additional 18 months) by filing a PCT application within 12 months of the priority date.

PCT stands for Patent Cooperation Treaty, a system that opens the door to potential patent coverage in multiple countries with a single application.

A PCT application delays the initial filing deadline of each member nation, thereby reserving your right to pursue international patent rights. To illustrate, let’s suppose you begin the patent process with a single utility patent application in the U.S. (remember you need to file prior to any public disclosure to reserve the right to seek patent protection in foreign countries – aka absolute novelty bar rule). This initial U.S. filing triggers a 12-month deadline by which you have to file any foreign applications in order to claim the priority date (i.e., the original filing date) of your earlier U.S. filing. Without the PCT, you would have to file an individual application in each desired foreign country at this one year anniversary in order to make the priority claim. That can be quite expensive at an inconveniently early stage of the invention or your business.

By filing a single PCT application, you can designate all the member countries and thereby postpone the deadline for entering the “national stage” (also known as “national phase”) until generally 30 or 31 months from the priority date. With a single filing that costs a few thousand dollars, you are buying an option that extends your national stage deadline by roughly 18 months (i.e. from 12 months to 30 or 31 months). This additional one and a half years may be crucial for you to realize the commercial potential of your invention, gather funding, or even decide that the invention is not worthy of protection in so many foreign countries. Even if you come to the latter conclusion, it is preferable that you only spent a few thousand dollars to give yourself the extra time to figure this out rather than laying out tens or hundreds of thousands of dollars upfront only to realize later that it wasn’t worth it.

What is the cost of a PCT application?

A PCT application typically costs roughly $4,000.  The bulk of the cost consists of government filing fees. There may be additional subsequent costs, depending upon whether you choose to file any optional claim amendments.

What countries are not members of the PCT?

While most countries are members of the PCT, individual applications must be filed in each non-member country by the 12-month deadline described above (Option 1).

Will the PCT Application lead directly to granted foreign patents?

No. The PCT application is simply a placeholder. You must follow through by filing national stage applications in each desired foreign country or region. Generally, each national stage application will be examined by the respective patent office.

Should I pass on the PCT and file directly in each foreign country at the 12-month deadline?

While the PCT may be helpful in deferring costs, it may not be for everyone. If, for example, you approach the 12-month foreign filing deadline knowing for sure that you only wish to seek patent protection in one or two other foreign countries, then the PCT might not be for you. If you are certain that it is unnecessary to reserve the option to file in other additional countries, then you can simply choose to file direct applications in your desired countries by the one year anniversary. It is also possible that the only foreign countries that you care about are not members of the PCT (e.g., Taiwan).

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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