Overview
To obtain foreign patent protection, you must file a separate patent application in each country in which you desire to seek patent protection. A single, world-wide patent does not exist. Moreover, most foreign countries require that the idea not be disclosed to the public prior to filing. In other words, they require absolute novelty, which is unlike the United States system that allows some public disclosure prior to filing of the patent application. For most applicants in the United States, the typical route to foreign patent protection is to first file a patent application in the United States. The applicant/inventor need not immediately file separate patent applications in foreign countries. Rather, through various treaties, the applicant/inventor can wait twelve months before filing a patent application in each of the desired foreign countries.
The cost to file in each foreign country will generally be about 2/3 of your U.S. patent application cost due to varying governmental filing fees and translation costs. As a result, the aggregate cost to file in foreign countries begins to add up if you want to seek patent protection in a number of countries.
Unless you have pre-existing relationships in foreign countries, it may be difficult to recoup the cost for foreign filing a patent application. As discussed above, the inventor must file in each foreign country within 12 months of the filing date of the US application. Most applicants/inventors in my experience don’t have enough market insight within twelve months to decide which countries to seek patent protection. As such, many applicants/inventors take advantage of the Patent Cooperation Treaty (PCT) which allows the inventors/applicant to delay filing in foreign countries for another 18 months beyond the initial 12 months. With the help of the PCT, the total time to file a patent application in a foreign country can be delayed for a total of 30 months from the first filed patent application. Those 30 months provides the inventor much more time to consider potential markets. Also, the U.S. patent application may be examined thereby offering insight into the potential scope of patent protection in foreign countries.
Common course of action
The most common course of action for U.S. inventors is to initially file a patent application in the United States which preserves their rights for twelve months (12) to seek patent protection in most foreign countries. Since the cost to file a patent application in multiple foreign jurisdictions would be cost prohibitive for most individuals and smaller companies and since twelve months is not generally sufficient time to determine marketability of the invention, inventors will take advantage of the Patent Cooperation Treaty (PCT) by filing a PCT application at the end of the initial 12 month period.
PCT Application process
The PCT has been signed by most of the important countries except for a few South American countries, Taiwan and a few other smaller economies. The PCT allows you to delay filing in each member country for another 18 months over and above the initial 12 months. As such, the PCT application is a popular vehicle by which inventors can preserve their right to file in foreign countries for a total of 30 months from the filing of the U.S. patent application and expend a significant amount of money to file in a number of countries.
The application filed through the PCT may go through an examination phase but it is better to think of the PCT process as a means by which you preserve your rights to file in contracting states of the PCT for a total of thirty (30) months from the filing date of the initial U.S. filing.
Gain insights during the 30 month period
During the 30 months (12 plus 18) you should work to gain market insight and other, country-specific details. You may find out that you have great market reception for your product in one country but not another. You may develop key business relationships with distributors in foreign countries. Also, within the 30 month period, your U.S. patent application may be examined allowing us to request expedited examination in foreign countries and to anticipate rejections in foreign countries.
Most significant countries are a part of the PCT
The PCT route only applies to those countries (i.e., contracting states) that have agreed to join the PCT. By taking advantage of the PCT process, you reserve the right to seek patent protection in all contracting states. For those countries not a part of the PCT, you must file directly in the country within 12 months after filing your U.S. patent application, if allowed. Most developed countries are part of the PCT application or allow you to directly file your patent application within 12 months of your U.S. filing date. Notable exceptions to PCT membership are Taiwan and a few South American countries
Bypassing the PCT
You may always bypass the entire system and file directly in the foreign countries. The benefit for doing so is that your patent application immediately enters the queue for examination and is more likely to issue as a patent faster than if you utilize the PCT process. The obvious downfall is the high up front cost of doing so.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.