If you’re eager to obtain a patent, there’s a good chance you’ll seek to protect your invention in more than one country, if not worldwide. Unfortunately, there’s no such thing as an international patent application per se. The closest thing – and what most people think of as an international patent application – is a Patent Cooperation Treaty (PCT) application. Currently, 150 countries participate, including the United States.
Filing a PCT application is a great way to streamline the process. You file a single application and then prosecute the same application (i.e., follow up with the relevant patent offices) in multiple countries. Keep in mind, however, that you might have to amend your application to ensure that it complies with the guidelines set out by each country’s patent office – for example, by providing translations. You might have to amend your application to ensure that it complies with the guidelines set out by each country’s patent office.
You might have to amend your application to ensure that it complies with the guidelines set out by each country’s patent office.
Where to File
PCT applications are filed in receiving offices (RO) in certain countries. The U.S. Patent and Trademark Office (USPTO) serves as an RO for patent applicants who reside in the United States or are U.S. citizens. If neither applies, you must file in another RO where you’re eligible. For instance, Canadian applicants who reside in Canada are eligible to file in the Canadian Patent Office.
How it Works
Once filed, PCT applications go through two stages:
1.) The International Stage
During the international stage, an International Searching Authority (ISA) conducts a search and issues a nonbinding opinion as to the patentability of a PCT application. You can also request one or more supplementary searches that expand the scope and increases the likelihood that relevant prior art (evidence that your invention is already known) will be uncovered.
2.) The National Stage
You participate in the national stage if you determine you wish to continue following the international process. This involves paying national fees, for example, and you must apply within a specified amount of time. In the United States, if you’ve filed a provisional patent application, you must enter the national stage (e.g., file a non-provisional patent application in the United States) within 30 months of the filing date of the provisional patent application. Filing a PCT application buys a lot of time for applicants who have provisional patent applications pending.
Filing a PCT application buys a lot of time for applicants who have provisional patent applications pending.
This means that filing a PCT application buys a lot of time for applicants who have provisional patent applications pending. If you’ve already filed a non-provisional patent application, you must file a PCT application within 12 months of the filing date of the non-provisional patent application.
The Alternative to a PCT Application
If you don’t want to file a PCT application, you’ll have to file separately for a patent in each country where you seek protection (often a costly proposition). If you’ve filed a provisional patent application, you’ll have 12 months from the filing date of the provisional patent application to file both the U.S. non-provisional patent application and foreign applications. Most countries bar applicants from filing after the 12 months have passed. In other words, the non-PCT route has a shorter timeline.
A Helpful Resource
International patent applications are complex. A useful summary, complete with diagrams, is available from the World Intellectual Property Organization.