Ever since this thing called the Internet erased our horizons, many of us have found ourselves conducting business far outside the United States. For many of our clients, filing a patent in the United States is not enough. They seek also to protect their invention overseas, where the rules are different.
U.S. patents do not afford protection in other countries. Patents are territorial and must be filed in each country where protection is sought. So if you want to be covered in China, Korea, Ghana and Chile, you must file a patent in each of those countries. However some countries have joined in a treaty, making patent-filing easier in each of these member countries. The Patent Cooperation Treaty (PCT) involves a group of 143 countries. (For a list of countries in the PCT, see Wikipedia's entry on the PCT.)
According to the USPTO, the PCT makes it possible “to seek patent protection for an invention simultaneously in a large number of countries by filing a single ‘international’ patent application instead of filing several separate national or regional patent applications.”
By filing internationally under the PCT, you gain the equivalent of patent-pending status in all of the member countries for a period of 30 months. When that 30-month period is over, you proceed to file in each member country where you feel it is financially worthwhile to do so.
Here are the steps to file internationally:
1. File your provisional patent with the USPTO. This is an optional step but it gives you a year to get things together to conquer the world, all the while having patent-pending status.
2. Within one year of your earliest filing (of any kind, provisional or nonprovisional), decide whether you want to file internationally. Don’t wait, because if you do, you’ll lose your right to file your PCT.
3. File your international application at same time that you file your nonprovisional United States patent application. You file the same application; that is, the specification, claims, and drawings are the same for the US application as well as for the PCT. It’s the paperwork and fees that are different. For a U.S. micro-entity (small business) the current U.S. fee is $430. For a PCT filing, it’s roughly $2,000. The PCT fee is based on the quantity of drawings, pages, and claims. The form that goes with your PCT application is called a PCT RO 101.
4. Once filed, you have global patent-pending status for 30 months. That’s two and a half years to get your international business and sales in order.
5. Within 30 months you should be ready to decide which countries you plan to conduct business in. Then you can file in each of those countries. The process is similar to that of the U.S. Once filed, you are in the “national stage” in each of your chosen PCT member countries. At this point your patent application gets translated into the language of each country with which you decide to file.
6. Generally within two years, each country will have reviewed your application to let you know whether you’ve been granted intellectual property in their country.
By the way, you might think: “Why don’t I just save money by filing internationally, and simply include the United States as one of my countries? Then after the PCT’s 30 months of evaluation are up, I can just file in the U.S.”
This doesn’t actually save you money, and it certainly doesn’t save time. The U.S. Patent and Trademark office typically takes only 18-24 months to take up prosecution of your patent application. So our clients usually opt to file both their U.S. and their PCT at the same time. They’ll get a quicker determination from the U.S., and then once it’s allowed, they file in the country of their choice. One reason to do this is that a positive determination from the USPTO helps expedite the process of filing abroad, because those countries have the USPTO’s determination to help them move things along.
For a list of all countries’ intellectual property offices, consult the World Intellectual Property Office.