PCT Design Patents

PCT design patents refer to patents subject to the Patent Cooperation Treaty, an international agreement which addresses how patent protections are applied to intellectual property from one country to another.

International Patents

Every country has its own set of laws which governs the people of that country. Patent law is no exception. To enjoy the protection of a patent in a specific country, a person must file according to the laws of that country. Some treaties aid in the application for a patent internationally. One treaty, the Patent Cooperation Treaty or PCT, provides aid to persons seeking patents internationally. Inventions in the United States must acquire a license from the Patents and Trademarks Commissioner prior to applying for an international patent.

International Manufacture

In order to prevent international companies from manufacturing products (for which they already have the tools and molds) after a manufacturing relationship has ceased, companies often apply for foreign patent protection for their design. In countries like China, Japan, and the European Union, custom officials are empowered to enforce design patent rights through their national laws.

Filing for a foreign license is required if an application in the United States has not yet been filed or if 6 months hasn't passed since the filing in the United States. Patent applications are considered to be a request for a foreign license. Each applicant then receives either a grant or denial in a filing receipt in the mail. Unless the invention has been deemed secret by the receipt of the filing after 6 months from the United States filing date, a license is not a prerequisite.

Secret or Undisclosed Patents

Explicit consent is required from the Commissioner of Patents and Trademarks if the invention has been deemed secret or undisclosed. Publications of an invention prior to the date of application, in most foreign countries, will block the right to a patent. This is why it is advisable to file for the United States patent first. Disclosure of the invention prior to the application will keep the filing of international applications from being granted, because most countries do not have the one-year grace period that U.S. patent law provides.

First to File Country

Applying for patent protection in the U.S. as soon as possible is still essential, even if there is no desire for an international patent or its protection. The America Invents Act made the U.S. a "first to file" country. Fees are required for maintenance in every country but their amount and the timing for their payment differ wildly from country to country.

Working Requirement

Usually, countries require that any invention patented in that country be manufactured there after a certain period, normally three years. This is referred to by most patent professionals as the "working requirement." Some countries will void a patent if the invention is not manufactured there within this period. Licenses may be granted to any person who applies, if the patent is subject to the grant of compulsory licenses.

The Cost of Hesitation

If filing for a patent is delayed until an invention or product has proven itself commercially viable, the company may find it difficult to preserve their patent rights. Companies who have invented innovative products may find it necessary to file an application for a patent even before they have discussed its manufacture with suppliers. Any company with a substantial Intellectual Property (IP) budget may risk additional resources trying to develop a portfolio of patents for any product that may or may not be successful.

The Risk

The United States Patent and Trademark Office (USPTO) fees and attorney fees associated with filings before there are any sales, marketing, or manufacturing can be daunting, especially for a company who seeks to protect more than one inventive aspect of their product or products. These fees may even be prohibitive for small businesses, independent inventors, or new commercial ventures. Resources spent on patent filings and fees may be wasted if the product is not eventually successful.

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