International Patent: Everything You Need to Know

An international patent, also referred to as PCT patent application, is a request that your invention be patented outside of the United States. It is important to note that there is really no such thing as an “international patent.” Rather, if you want to obtain patent protection in countries outside of the United States, you’ll file a PCT patent application. PCT, also referred to as Patent Cooperation Treaty, is an international patent treaty that provides a procedure for filing for international protection.

The treaty helps those wanting to seek patent protection in other countries as it delays the process for up to 30 months (2 and a half years) so that inventors can further produce their products and decide on which countries to seek protection in. For example, someone may have a new product on the market that will sell incredibly well in some countries, but not so well in others. Therefore, the inventor can file a PCT application to seek patent protection in several countries; but then subsequently decide to file a formal patent application in only some of those countries. The PCT written opinion and report will provide you with specific details as to the likelihood of your success for patent protection in those respective countries.

Patent Cooperation Treaty

Enacted in 1970, the Patent Cooperation Treaty (PCT), sometimes referred to as the international patent application, is a transnational treaty that includes participation in excess of 145 States. Administered by the World Intellectual Property Organization (WIPO), this treaty allows someone to apply for patent protection in several countries with one application. The purpose of the treaty is to provide a more unified, simpler process for those who wish to file a patent application throughout several countries.

However, keep in mind that the international patent is not truly a patent that protects you worldwide from unauthorized use of your invention. Rather, the international patent is the form filled out through the PCT, which then reaches those countries identified in the PCT application (so long as those countries are participating countries). The application, however, may not automatically provide you with protection in each of these countries. The PCT application can only be used as a reservation for submitting your patent to those specific countries, allowing you to delay the process for up to 2 and a half years so that you can make a determination as to which countries to seek protection in. Only after that point is the PCT application converted into a formal patent application.

In simpler terms, the PCT process includes two phases: [1] filing the international application and [2] choosing which countries to apply for patent protection, and converting the PCT application into an actual patent application within each specific country you wish to seek protection in.

PCT Timeline

As previously noted, the main benefit of the PCT is to defer your international patent requests for a period of up to 2 and a half years. Therefore, when you want to file a PCT, you’ll visit the WIPO website and gather all necessary documentation needed for filing. There are still steps and guidelines for you to abide by for the PCT application itself. Once you have filed your application, it’ll be reviewed by a patent examiner who will then draft a written report and opinion indicating the likelihood of you obtaining patent protection in each country you identified in your application. For example, if, in your application, you indicated that you have an interest in obtaining patent protection in France, Switzerland, the Philippines, and Austria, the report itself will provide you with an extensive written opinion as to whether or not you will be successful for patent protection in that country. This opinion is determined by days of thorough research on patents within those countries, and the types of patents that have been successful.

Note that it is very possible that, just like U.S. patent applications, you could receive your PCT application back requesting additional details or supporting documentation. In this case, you will need to make the necessary corrections and amendments before sending these items back for additional review. These amendments could be timely, taking up to perhaps one year to complete all necessary documentation. However, remember that the 30-month clock is ticking at this point since the clock begins immediately after you’ve submitted your application.

Frequently Asked Questions

  1. How can I file for patent protection in other countries?

Patents are limited to a specific geographic region. If you wish to apply for protection in several countries, you can go the direct, Paris, or PCT route. The direct route simply means that you directly file individual patent applications simultaneously in all countries where you want your invention to be protected by a patent. Alternatively, you can file in a country that participates in the Paris Convention. If you go down this route, you then have one year from the date of the first application to file in other participating countries. Lastly, you can utilize the PCT application, as referenced in detail above.

  1. Do only companies use PCTs?

Major corporations, universities, and even research facilities use this when seeking patent protection internationally. Smaller enterprises and individuals may also use it. It depends wholly on the type of invention you want to protect, and the level of protection you seek.

  1. What kind of protection will I have with an international patent?

The international patent application has the same protections and outcome of a national patent application filed with the United States Patent and Trademark Office (USPTO).

  1. How much does it cost to file?

There are 3 different fees that will accompany the application, including a filing charge (1,330 Swiss france2), a charge to conduct the search, which varies between 150-2,000 swiss francs, and a transfer fee, which also varies depending on the office receiving the application.

  1. Are fee reductions offered?

Such reductions apply to those who file electronically—the reductions will differ however depending on the type and format of the filing you submit.

  1. Can I claim priority over my patent?

Claiming priority simply means that, once you file for patent protection, your invention (although not protected at that point in time since you merely filed an application) cannot be invalided by someone else who may file for protection on the same invention after you’ve already done so.

  1. What languages can I file my application in?

The application can be filed in any language that the receiving office accepts. Therefore, if you file in a language not accepted, you must translate the application.

A receiving office should accept filings that are of “publication language” meaning those languages that publish each filing. These languages include English, French, German, Chinese, Arabic, Korean, Japanese, Russian, Portuguese, and Spanish.

  1. What is the supplementary international search report?

This report is similar to that of the primary international search report, and contains similar literature and articles to assist you in your process for determining whether or not you should proceed with your international patent application, and which countries would be most favorable.

  1. Can I file for a patent in the United States simultaneously?

Of course. Generally, most inventors will file for patent protection in the U.S. with the USPTO while simultaneously filing a PCT application with WIPO. This makes it a bit easier for you since you are already going through the lengthy patent process in the U.S. to begin with, and have all necessary documentation available to you.

  1. What if my PCT application is declined?

If your PCT application is denied, you’ll be sent the written report and opinion stating as such. Make sure you read through these documents thoroughly to better understand why you are being denied. Either way, you can submit an “argument” along with a re-examination fee to have your application re-reviewed. It is likely that the application will be given to a different patent examiner, or even a panel, to discuss and review the details of your PCT application.

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