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2008-12

The Inventor's Mentor

December 2008

Filing an International Patent Application


Your invention is absolutely wonderful. If the patent is awarded, you expect to get royalties from the US market. Should you also apply for an international patent to secure rights for the whole world? This newsletter shall describe the international application process and discuss some of the pros and cons of filing such an application.
The Patent Cooperation Treaty (PCT) provides a unified procedure for filing patent applications to protect inventions in each of the nations which are signatories of the treaty (Contracting States.) A patent application filed under the PCT is called an international application or PCT application. It is performed in two steps:

International Phase
The first step called the international phase consists of filing a PCT application with one of the international patent offices, called Receiving Office (RO). This phase must be entered within one year of filing the first provisional or non-provisional US application claiming the invention. Upon receiving the application, the International Searching Authority (ISA) generates the International Search Report (ISR) that includes the most relevant prior art. This report is provided to the inventor 9 months after filing the PCT or 16 months after the filing of an earlier (US) application claiming the invention to which the PCT claims priority.
The ISR is accompanied by a written opinion regarding the patentability of the invention. This written opinion is called the "international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter I")
Prosecuting the application beyond the International Phase can be very expensive. To minimize financial risks, the inventor has the option to demand an “International Preliminary Examination Report on Patentability,” commonly abbreviated "IPRP Chapter II.” This report is more detailed and supersedes the IPRP Chapter I.
The PCT application is published 18 months after the priority date (filing date of PCT or earliest US application.) The ISR is published together with the PCT application (or as soon as possible afterwards). The IRPR Chapter I or II is published 30 months after the priority date.

National Phase
The second step, called the national phase is conducted by the patent offices in each of the designated individual countries. It must occur generally within 30 months of filing the first provisional or non-provisional application and requires the assignment of a foreign representative in each of the designated countries.

PCT Cost
The cost of entering the international phase is approximately the same order of magnitude as the cost of filing for a conventional US application: the application must be written with a full set of claims and accompanying drawings. In addition, fees must be paid to the Receiving Office.
However, the cost of entering the national phase can be much greater: the application must be translated in different languages and filed in each of the designated countries by foreign representatives. These representatives must be coordinated and managed by your US attorney or agent. Thus, designating 10 countries may easily cost the inventor several hundred thousand dollars.

To File or not to File?
The main advantage of the two phase PCT procedure (international/national) is that it provides the opportunity to delay the onset of costs. If you have doubts regarding the profitability of your invention, you can always secure the PCT priority by filing a PCT application and entering the international phase. It is a way to get started without incurring up front astronomical costs. You then have 30 months from the date of the first filing (PCT or US) to ascertain if your invention has enough revenue potential to justify the investment of several hundred thousand dollars to pursue the prosecution into the national phase.
Generally speaking, filing in the US should be your first priority because the US is the largest market and its intellectual properties laws are relatively well respected. If you decide to continue into the National Phase, depending on your invention, you may want to consider filing in industrialized and rich countries such as Great Britain, France, Germany, Japan, Canada and Australia. Industrial powerhouses, very populous nations and emerging powers such as South Korea, China, India, Russia, and Brazil, may also be interesting filing venues.

Next month we’ll discuss another topic. Stay tuned. For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com. If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com. This newsletter should not be construed as legal advice. ©2010 by George Levy.

 

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