Patents are granted on a country by country basis. If a company is considering “international” patent protection, that is to say patent applications in multiple countries, there are two primary approaches:
1. Filing patent applications on a country by country basis directly in the patent office of those countries – This can present several concerns. First, it forces the company to select the target countries early, prepare the patent applications, and pay the fees for each selected country early in the process. At this early stage of product development, the company may not yet know which countries are desirable for pursuing patent rights. Furthermore, there are timing issues in filing the patent applications in each country which must be followed to avoid the loss of patent rights. Fortunately, agreements such as the Paris Convention permit a one year timespan for filing of the patent applications within the multinational patent family instead of having to file all of the applications on one day.
2. The Patent Cooperation Treaty (PCT) streamlines and provides more flexibility in the filing and expenses of multiple patent applications compared to direct filings in the national patent offices. Using the PCT procedure, the applicant initially needs only to file a single patent application in the receiving office for which the applicant is eligible. This initial filing accords the applicant a single international filing date and preserves the option to direct this patent application to selected PCT member countries at a later stage. Although more than 125 countries are currently a party to the PCT, the company should confirm that its likely target countries are parties to the PCT. Notable non-member countries in Asia include Taiwan and in South America include Argentina.
After the PCT patent application is filed, the International Search Authority (commonly the United States Patent and Trademark Office, the European Patent Office, or the Korean Patent Office) will perform a search on the PCT patent application for the most relevant prior art and deliver a written report regarding the patentability of the subject invention. This international search report can help the applicant to decide whether it would be worthwhile to seek national protection, and if so, in which countries. Optionally, while still in this international stage, the applicant may amend the application and “demand” a preliminary examination by an International Preliminary Examining Authority (IPEA). This is typically requested when the initial search report is not favorable.
The applicant selects the desired PCT member states before moving into the next stage (“national” or “regional”), where the international application and the search results are transmitted to patent office of the selected countries. Typically within 30 months from the filing date of the international patent application, the applicant continues the patent application process in the desired countries, where the patent application will be examined according to the patent laws and procedures of each of those selected countries. It is at this stage where the cost of preparation and fees multiply based on the number of countries selected, due to translations, revisions, filing fees, and other expenses. During the examination, some patent offices place great weight on the ISA and IPEA search reports (often saving time and money) while others will perform their own search. The applicant then prosecutes the application until the patent is hopefully granted.
Each of the two primary international filing approaches has advantages and disadvantages, especially in light of the business plan. The PCT patent application can preserve the option for filing in many countries for a relatively low upfront cost. It also effectively permits more time to select target countries and more flexibility on the timing of the spending. Additionally, the PCT option can be combined with other agreements such as the patent prosecution highway. This makes the PCT an effective tool in international intellectual property strategy.
