Common Questions and Answers About Foreign Patent Filings

Below we’ve compiled detailed information regarding some of the common questions we encounter from clients during the patent process.

Consult with a International Patent Attorney Patent Cooperation Treaty (PCT) Filings

International Patent Protection

Is an International Patent Worth It?

While a US patent can protect your invention nationally, that protection does not apply worldwide. If you are considering making or selling your invention in another country, it is worth considering a foreign patent application to expand your patent protection internationally.

How Do I Register a Patent Internationally Through the Patent Cooperation Treaty (PCT)?

To obtain patent protection in another country, you will need to apply for a patent in that specific country. One route to consider for this process is through the Patent Cooperation Treaty.

A Patent Cooperation Treaty (PCT) application is an international application administered by the World Intellectual Property Organization (WIPO) that allows you to reserve your priority in over 150 participating countries with a single filing. Once you have a PCT application on file, your application undergoes a form of “preliminary examination” in which the international search authority renders a patentability opinion. With this opinion, you can choose to enter the Patent Examination on a country-by-country basis – one-by-one, or all at once (Europe has a unified patent office for each member of the EU, while Asian countries have separate patent offices). Any country that is a member of the Patent Cooperation Treaty (PCT) must honor the patent priority established by your international patent application, but there is still an examination process.

How Does the Pct Patent Work?

If you are considering international protection, the PCT application is a good tool to lock down your priority in most of the world with a single filing. Having made this single filing, you will then have 30 months to decide in which countries you’d like to obtain a patent based on your PCT application.

Without a PCT application, you’d need to separately apply for a patent in each country with different rules and regulations, all within 12 months of whichever country you filed in first (assuming that the first-filing jurisdiction is recognized by the subsequent jurisdiction).

If you’re unsure about international patent protection, you can start out with a patent filing in the US. As soon as you file a formal, non-provisional U.S. Patent Application, you have a period of one (1) year to decide if you want to pursue international patent protection through the Patent Cooperation Treaty (PCT).

This one-year deadline is an important date to consider, as some foreign countries will not grant you patent rights if you’ve publicly disclosed your invention without first filing a patent application before your public disclosure. Alternatively, you can file a PCT directly without having first made a US Filing.

What Is the PCT Process?

Below is the general process for PCT applicants:

PCT Application is filed
1. (by 12-month filing deadline)
PCT Examination Results received
1. (6-8 Months from PCT filing)
Select which PCT member states in which you would like your PCT application recognized
1. (within 30 months)
Report your PCT Application and Examination Results to the member state
1. (US/Europe/Canada/China/Japan/Russia/etc)

As such, filing a PCT application essentially takes that 12 month US deadline and turns it into a 30-month extension for all 148 PCT member states, i.e. 18 additional months

If your company has plans to take its operations and sales internationally, having a PCT application ready to file each country you plan to expand to can prove an invaluable tool to protect your IP. This rings especially true for Software as a Service (SaaS) and Information Technology (IT) companies, as the product being offered can more easily be infringed upon when compared to a physical product, especially abroad.