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PCT Filings: One Method to Seek International Patent Protection

By John DiGiacomo

Filing for patent protection with the USPTO is probably somewhat familiar to inventors and businesses here in the United States. However, the options for seeking international patent protections are probably less well known. Consequently, it is important to seek the help of skilled and dedicated patent attorneys to help you evaluate the pros and cons of the two main avenues available for protecting your intellectual property internationally.

The Patent Cooperation Treaty

The first method available is to use the provisions of the Patent Cooperation Treaty (the “PCT”). The PCT is an international treaty completed in 1970 which now has 145 signatory countries.

The PCT was designed to allow inventors and businesses to obtain patent protection in more than one country via the filing of a single patent application usable by all national and regional patient-granting authorities. The actual approval of the patent remains under the control of the various patenting authorities, but bureaucratic proceedings are significantly reduced under this “single-application regime.” The PCT is also single-fee and single-language (the language of your home country).

The process for seeking international patent protection is generally similar to seeking a patent under national laws. Essentially: Application, search, publication and then grant/denial. In a bit more detail, and as described more fully here at the World Intellectual Property Organization website, the steps for a PCT filing are:

  • Filing: About 12 months after you file with your national Office (in Washington, for example), you file the PCT with the same national office, pay the additional fees, etc.
  • International Search: In the same manner as is done for national patents, a search is done of published patent documents and prior art documents to see if your invention is patentable; the search is done by a so-called “International Searching Authority” (“ISA”) one of which is the USPTO; the USPTO or other ISA prepares a report on your invention’s potential patentability.
  • International Publication: This is done around the 18-month mark.
  • Supplementary International Search (if wanted/needed): If you think your patent application might be in trouble (or for other reasons), you can ask for a second ISA search which might uncover additional prior art which might have been missed because of different languages, national, scientific, and technical standards.
  • National Phase: At the 30-month mark, your PCT application goes directly before the national (or regional) patent-granting authorities of the jurisdictions in which you want to obtain patents; in most jurisdictions, a PCT filing is treated just like an ordinary direct filing for purposes of examination; if successful, a patent will eventually issue for that country/jurisdiction.

The Paris Convention

The PCT is an alternative to the well-known Paris Convention, the second main avenue for obtaining international patent protection. The Paris Convention is an international treaty allowing patent seekers to file an application in their home country and have that application set the priority date for subsequent patent applications in other nations and jurisdictions.

Under the Paris Convention, your filing priority is protected for 12 months allowing you and your business time to complete all the national patent applications that you need. The Paris Convention allowed inventors to avoid costly and difficult simultaneous cross-national patent filings and put an end to competitors racing to file patent applications in a foreign jurisdiction and then litigating to determine who had priority.

Advantages and Disadvantages

The two main advantages of using the Paris Convention in seeking international patent protections are familiarity and speed. The Paris Convention has been around a long time and its use and process is familiar to inventors, lawyers, government officials, and businesses. Moreover, the Paris Convention sets a 12-month deadline for completion of applications.

The main advantages of the PCT are:

  • Preservation of your priority for 30 months instead of 12;
  • a single-application filing process; and
  • an international search conducted by the receiving office in your home country.

Another consideration is the number of signatories. While not a large difference, the number of signatories is higher for the Paris Convention (177) than for the PCT (152) as of July 2017. Among the notable non-signatories for the PCT: Argentina, Taiwan, Pakistan and others in Africa and South America. See here for the PCT and here for the Paris Convention.

Filing fees/costs are also significant considerations. If you need patent protection in only a small number of jurisdictions, then using the Paris Convention may be less costly. If, on the other hand, you want more expansive protection, the streamlined application provided by the PCT may be more cost effective.

Your business and your inventions are unique. Good patent lawyers are needed to help you decide which filing process is better for your circumstances.

No Such Thing as an “International Patent”

Neither the Paris Convention nor PCT create a global agency that issues patents. All patents are still issued pursuant to national laws and procedures required by each national and regional patent-granting agency. The Paris Convention was, and is, principally about international recognition of priority dates. The PCT was, and is, principally about standardizing the application process and providing more time.

Contact Revision Legal

There are many issues to consider when seeking patent protection internationally. Every inventor and every business needs experienced patent lawyers to help. You need the professionals at Revision Legal.

We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to helping you protect your inventions and other intellectual property domestically and abroad.

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