© 2002, Gallagher & Dawsey Co., LPA
Many inventors incorrectly believe that applying for a U.S. patent
protects their invention throughout the world. In fact, a patent that
issues from the U.S. Patent & Trademark Office (USPTO) only provides
protection within the borders of the U.S., with some limited
exceptions. Therefore, if an inventor desires patent protection
outside the U.S., as is usually the case with successful inventions,
they must apply for patent protection outside of this country. While
there are four generally recognized routes to follow in achieving
foreign patent protection, this article will focus on the most common
route, which is the Patent Cooperation Treaty (PCT).
U.S. citizens applying for patents with the USPTO are often entitled
to certain international priority rights pursuant to numerous
international treaties. One such treaty that has been in force since
1978 is the PCT. The PCT established a centralized system of filing
and searching a single "international" application when an applicant
is seeking patent protection in PCT member countries. Currently over
100 countries are members of the PCT. The primary goal of the PCT is
to simplify the process of filing foreign patent applications and
reduce duplicative efforts. It is important to note that the PCT does
not restrict applicants from directly filing applications with the
patent offices of foreign countries.
The first step in the PCT process is referred to as "Chapter I" and
includes the filing of an international application with a receiving
office under the provisions of the PCT, thus establishing an effective
filing date. International applications stemming from U.S. patent
applications generally elect the USPTO as the receiving office. This
first step may take place when the U.S. application is filed, but it
must be completed within 12 months of the filing date of the U.S.
application. In this instance, the PCT application requests the
priority date of the original U.S. application. It is important to
note that if the 12-month period lapses, priority dates may be lost,
or worse, foreign filing may be prohibited.
Generally the filing of an international application requires that the
associated U.S. application be reformatted to meet the PCT
requirements and numerous PCT forms, collectively known as a Request,
must be completed. In this Request the applicant must make a
"designation of states." The designation of states requires the
selection of PCT Contracting States in which protection is desired. At
this stage most applicants designate all of the PCT participating
countries because the filing fee associated with designating all the
countries is the same as that charged for designating only five
Approximately 16 months from the priority date, a PCT search report is
issued from the International Searching Authority. The PCT application
is published 18 months after the priority date.
Now the applicant may either (i) request preliminary examination prior
to the expiration of 19 months from the priority date, or (ii) supply
each designated state with a translated copy of the international
application prior to the expiration of 20 months from the priority
date and enter the "national stage" of each designated country.
Typically, applicants will request preliminary examination prior to
the 19-month deadline because entry into the national stage of the
designated countries may then be postponed until the expiration of 30
months from the priority date, rather than the 20 months mentioned
above. This extra 10 months allows applicants additional time to
evaluate whether it is worth the costly process of entering various
national stages. Additionally, the applicant will often know whether
the U.S. application is likely to result in an issued patent by the
time the 30-month deadline expires.
Once the applicant makes this "Demand" for an international
preliminary examination of the PCT application it enters Chapter II of
the PCT process. The designated International Preliminary Authority
then examines the application and issues a report, called a
Notification, within 28 months from the priority date. Applicants must
then decide, prior to the 30-month deadline, whether they want to
proceed to the "national phase." The PCT's role in the international
patent application process terminates at the end of this 30-month
period. During the "national phase" each designated country examines
the application and the Notification, and a prosecution period,
similar to that associated with U.S. applications, begins.
It should be evident that the process of foreign patent protection is
complex and should be handled by a patent attorney. However, there are
a few important points that each inventor should commit to memory.
First, to preserve foreign filing rights and priority dates, one
should file an international application in accordance with PCT
requirements within 12 months of filing a U.S. application. Second,
the relatively inexpensive process of filing an international
application preserves the right to file national stage applications in
the over 100 foreign countries that are PCT members. Lastly, filing an
international application and the associated requests and demands may
allow an applicant up to 30 months before filing the more costly
national stage applications.