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Dallas International Patent Attorneys

Assisting With International Patent Applications

In today’s international marketplace, many inventors and businesses wish to compete at a global level. To begin the process of protecting their inventions abroad, individuals and companies should consider filing an international patent application.

There is no such thing as an “international patent” that provides legal protection for an invention in all countries of the world. However, an “International Application” can be filed through the Patent Cooperation Treaty (PCT). The PCT is an international treaty with over 150 contracting states. When this application is filed, one filing date is established. You will reserve your right to file in any of the more than 150 countries, including the United States.

While the patent application is pending, the applicant can determine what countries to pursue patent protection. While ultimately, patent protection for the invention must be sought in each country that is designated, the PCT application provides the applicant with additional benefits that would not otherwise exist.

WIPO and PCT

The World Intellectual Property Organization (WIPO) administers the PCT and organizes the PCT Assembly, the PCT Working Group, and the Meeting of International Authorities. When a PCT application is filed, WIPO receives and stores all application documents, performs a formality examination, publishes the international application on its online database, PATENTSCOPE, publishes data about the PCT application as prescribed in the Treaty and Regulations, translates when necessary, and communicates documents to offices and third parties.

According to WIPO, the United States accounted for the most PCT applications with 56,142, followed by China with 53,345 and Japan with 49,702. WIPO’s PCT had a record-breaking 253,000 applications in 2018, the Madrid System had 61,200 international trademark applications, and WIPO’s Hague System for industrial designs had 5,404 applications. The United States also accounted for the most international trademark applications (8,825), but Germany accounted for the most international design applications with 3.964 applications containing designs.

IPLA and the Filing Process

One benefit of filing an international patent application is that the applicant is provided more time to decide which countries to designate. Generally, under a PCT application, an applicant is given 30 months to designate countries in which to pursue patent protection as opposed to a 12-month deadline or non-PCT applications.

The International Patent Legal Administration (IPLA) is part of the Office of International Patent Cooperation in the United States Patent and Trademark Office (USPTO) and decides petitions to the Commissioner in international applications filed under the PCT as well as U.S. national stage applications. The IPLA also resolves legal issues relating to the PCT and other international cooperative patent projects or agreements such as the Patent Prosecution Highway (PPH) and the Hague Agreement Concerning the International Registration of Industrial Designs.

The PCT procedure typically works such that a person files an international application with a national or regional patent Office or WIPO. The application needs to comply with the PCT requirements and be in one language.

What is an ISA?

An “International Searching Authority” (ISA) will then perform searches for PCT applicants of “prior art” and issues written opinions on a claim’s patentability. The content of your international application will be disclosed as soon as possible after 18 months have passed from the filing date.

For every international application, an ISA will establish an international search report and a preliminary, non-binding opinion on whether an invention meets patentability criteria. The written opinion will be public.

The PCT Contracting States have appointed the following offices as ISAs: the national Offices of the United States of America, Australia, Ukraine, Austria, Turkey, Brazil, Sweden, Canada, Spain, China, Singapore, Chile, the Russian Federation, Egypt, the Republic of Korea, Finland, the Philippines, India, Japan, and Israel. The regional offices of the Nordic Patent Institute, the European Patent Office, and the Visegrad Patent Institute are also appointed as ISAs.

You can file an international patent application in any language that a receiving office accepts, but you will be required to furnish a translation of the application if you file in a language not accepted by the ISA. When you file at one of the aforementioned appointed offices, receiving offices are obliged to accept an application in a “publication language,” which is one of the languages in which international patent applications are published (English, Spanish, Arabic, Russian, Chinese, Portuguese, French, Korean, Japanese, and German).

Some people may turn to a second ISA to identify other published documents not discovered by the first ISA. Additional ISAs could be used for further patentability analysis when an application has been amended.

Completing Your Patent

Your final step will be to begin seeking grants of patents from the national or regional patent offices of your desired countries. This will usually be done at 30 months from your earliest filing date.

A person usually has up to 18 months from the time they file an international patent application before they must begin national phase procedures with individual patent offices and fulfill national requirements. The time will be 30 months from the filing date of the initial patent application of which you claim priority.

Applicants who want to protect their inventions in more than one country first file a national or regional patent application with their national or regional patent office and file an international application under the PCT within 12 months from the filing date of the first application.

You do not have to wait 30 months from the earliest filing date of your patent application before you enter the national phase, as you can seek an early entry into the national phase. The time needed for a national examination of your application can vary depending on the patent office.

The alternative to the PCT is known as the direct, or Paris route. Under this approach, a person files separate patent applications in all of the countries for which they are seeking protection.

If an application is filed in a Member State of the Paris Convention for the Protection of Industrial Property (which has 177 contracting member countries), separate applications can be filed in other Paris Convention countries within 12 months. The PCT can involve some fairly sizable upfront fees, so people who only need protection in a limited number of countries may prefer the Paris route.

While the PCT can provide coverage in a large number of countries, the Paris route or other direct filing options may be necessary for protection in other countries. PCT protection also applies only to utility patents so that design patents will require filing directly with countries or regions.

International businesses with global distribution can often benefit from PCT applications, though. PCT can also be the preferred route for any business with expansion plans.

It is essential to understand that PCT and direct, or Paris route options are not necessarily an “either/or” proposition, as many people use both PCT and direct filings for maximum protection. You will want to fully discuss the level of protection you are seeking with an experienced attorney so you can determine the best path forward for your patent.

Whether you are a U.S. inventor looking to file a PCT application, or if you are a foreign inventor or company looking for help with the U.S. national stage patent application, a lawyer from our Dallas, Texas, law firm can help. We can explain the requirements, application process, and timeline involved. And we are here to answer any questions that arise along the way.

Contact Us for a Free Consultation

To schedule a time to meet with an attorney in our Dallas-based law firm, please contact us online or call (214) 824-1414 or toll-free at (888) 312-1750. Aaron P. Peacock is a United States Patent and Trademark Office (USPTO) registered attorney, and our firm has more than three decades of combined legal experience.

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