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International patent applications are the first step in letting you get exclusive rights to your inventions in over 150 countries around the world.7 min read
2. Reasons to Consider Not Using International Patent Applications
3. Reasons to Consider Using International Patent Applications
4. Common Mistakes in International Patent Applications
5. Deadline for International Patent Applications
6. Frequently Asked Questions
7. Steps to File an International Patent Application
Updated June 26, 2020:
What Are International Patent Applications?
International patent applications, called a PCT application, is part of how to patent an idea and is the first step in letting you get exclusive rights to your inventions in countries around the world. These patents offer more protection than a patent in the United States alone. The World Intellectual Property Organization (WIPO) administers the PCT. This patent application gives you protection for inventions in over 150 nations around the globe.
Reasons to Consider Not Using International Patent Applications
Incomplete Coverage: A PCT application only gives you access to patent protection in 151 countries. That means you won't have patent protection in 45 remaining nations. You may need to file patents with additional nations directly.
High Cost: If you don't plan to do international business soon, you might not need a PCT application. The costs can be very high, especially if you want to file for protection in several countries.
Reasons to Consider Using International Patent Applications
International Business: If you have an international business, you need international patent protection. A PCT application means you don't have to file multiple individual patent applications. It gives your application priority while giving you time to decide where to file.
Global Distribution: Your offices might be in the U.S., but you might manufacture or sell products abroad. Get an international patent to cover your intellectual property no matter where you do business.
Expansion Plans: If you have a startup and plan to expand your business sometime in the future, file an international patent application now. This will protect your future intellectual property. You may also attract investors who appreciate your global approach.
Common Mistakes in International Patent Applications
Forgetting to file a domestic patent application
Filing a PCT application doesn't mean you don't have to file with the USPTO. If you plan to do business in the U.S., start by getting a patent from the USPTO.
Believing that a PCT application protects your patent around the world
There is no one patent that protects your rights in every country around the world. For the greatest coverage, file a patent application with the United States Patent and Trademark Office (USPTO) first. Then file a PCT application and choose member countries where you need protection.
Assuming that patent law is the same in every nation
USPTO law doesn't apply to patents filed in other nations. Legal differences around the globe could help or hurt your case. As the United Kingdom case Edwards Lifesciences AG v. Cook Biotech Incorporated shows, employer ownership over intellectual property is stronger in the U.K. than it is in the U.S. Other countries can make filing patents for software and technology especially difficult.
Waiting too long to file a PCT application
In some countries, public disclosure of an invention prevents you from filing for a patent. You should file a PCT application before your U.S. patent becomes public. If you miss the deadline, you might need extra legal assistance to get the protection you need.
Not hiring a lawyer
It isn't easy to understand international patent law. If you want to protect your intellectual property rights effectively, hire a professional. Patent attorneys understand where you should apply for patent protection and why.
Deadline for International Patent Applications
You must file a PCT application within 12 months of filing with the USPTO. Each nation has its own schedule for patent applications. Consult the specific nation's schedule to meet the nationalization deadline.
There is no deadline for filing a patent application in the U.S. In general, you should submit an application as early as possible in the invention process.
If you use the PCT to file internationally, you can buy yourself some time. You will be able to mull over which countries you want a patent in for up to 30 months after the file date. You can analyze each country and assess their markets.
Knowing if your invention is in demand in each country will help you be successful. You can also figure out which countries your patent will likely get accepted in.
Frequently Asked Questions
What international patent application options do I have?
In addition to filing a PCT application, you can file directly with the patent office of any nation. You can also file with the European Patent Organization (EPO). This gives you access to patent protection in nearly 40 European member states.
If the invention was created in the U.S. by a U.S. inventor, they will have to obtain a foreign filing license before they file a patent application outside the U.S. If you file with the USPTO, it will automatically be given to you.
What if I filed at the USPTO and I didn't receive my foreign filing license?
If this happens, it might mean that your application is being reviewed at the Pentagon. This occurs when an invention could possibly threaten national security. It is very rare, but if the invention is a threat, you might get a secrecy order. This would prevent you from filing overseas.
If you did not directly receive a secrecy order, you automatically get one after six months. If you get a secrecy order, it should arrive before the six months is over.
Do I need permission from the USPTO to file an international patent application?
You need a foreign filing license in some cases. You must get one if you file an international patent application before filing with the USPTO. You also need one if you file an international patent application within six months of filing with the USPTO. You do not need one if you've already had a U.S. patent for more than six months.
What is the Patent Cooperation Treaty?
The PCT was created in 1970. It is available to states that are part of the Paris Convention for the PRotection of Industrial Property. It makes the initial filing process easier and cheaper for people who want to file in many countries at the same time.
Does the Paris Convention offer patent protection?
The Paris Convention for the Protection of Industrial Property extends intellectual property rights to over 100 member countries. If you file a patent application in one now and in others within 12 months, the Paris Convention treats them like you filed all applications at the same time.
How much does it cost to file an international patent application?
Filing a PCT application costs about $4,000. The nationalization fee for each country ranges from $2,000 to $7,000.
Will I have to pay maintenance fees?
Yes, it is possible that you will have to pay maintenance fees. These vary by country.
Most countries also require you to manufacture patented inventions within three years (but this period of time varies). This is what is called a "working period." If you do not manufacture the invention, one of the following will probably happen:
- Your patent will be void in that country.
- You will be forced to license the invention to anyone who applies.
It is best to research the country's policies before you file.
How can I enforce my patent internationally?
Enforcing international patents is complicated. It can also cost a lot of money. Figure out if having a patent in that country will be worth the cost of enforcing it ahead of time.
The following places have systems that allow for effective patent enforcement:
- United States (this is where it is easiest)
- Western Europe
It is somewhat difficult to enforce an international patent in the following places:
- China (but it seems to have improved a little over time)
- South Africa
Keep this in mind when you are deciding where to file.
Is there anyone who cannot file a PCT application?
Yes. At least one of the applicants who is filing must either be:
- a resident of the country
- a national of a country that is a member of the PCT
If this does not apply to one of the applicants, you cannot file. These factors also affect where you can file your PCT application.
Steps to File an International Patent Application
File a patent application in the United States
Start the process by filing a utility patent application with the USPTO.
File a PCT application
Submit a disclosure, a list of prior art, and relevant claims to support your international patent application. The International Searching Authority (ISA) will research your invention. The ISA will give you an International Search Report (ISR) and a written opinion (WOISA).
You cannot file an international patent application at just any patent office. You must specifically file your application in the appropriate receiving office. Look for a receiving office where you or one of your co-applicants is a resident or one where you are authorized to register.
You can also file with the International Bureau. The USPTO acts as a receiving office for U.S. residents. This is also true for the International Bureau.
Enter the national PCT application stage
Select the countries where you want patent protection. Next, you'll nationalize your PCT application in each country you choose.
Get a local attorney
During the nationalization stage, you must file paperwork in the countries of your choice. In most cases, you'll need a local attorney to handle paperwork or prosecute your patent.
Pay the fees
Each country charges a different fee for patent protection. This is in addition to the PCT application fee. Some countries also charge annual patent fees.
Collect your international patents
The international patent application process can take years. Communicate with your attorney to make sure the process is successful.
If you need help with your international patent application, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.