International Patent Application Process
People seeking to have their inventions patented in countries outside the U.S. can do so in one of two ways. The first approach is to the individual countries and pursue patents through each country’s patent application process. The second approach is to use the Paris Convention Treaty process (administered by the World Intellectual Property Organization), which allows an inventor to use one organization to pursue patents simultaneously in over 140 countries that are signatories to the treaty.
Filing An Application
The first step of the process is to complete an application complying with the PCT formalities and to pay the filing fee. The filer only needs to fill out the application in one language. When the Receiving Office gets the application (usually the USPTO for Americans, but we’ve also used the Russian office), it assigns a filing number and a priority date to the application. The priority date is important in case there are disputes later about who invented something first. The U.S. system has always been a “first to invent” system, contrary to most of the world, as well as the PCT system, which recognizes ownership of an invention by whoever filed the patent application first. (The United States passed a law in 2011 that will change our system to reflect the rest of the world over the next couple of years.)
International Patent Search
The Receiving Office forwards the application to an International Searching Authority (ISA) to begin the international search for other inventions that may be similar to the one in the patent application. The ISA then issues a Written Opinion of the International Search Authority, an opinion about the invention’s potential for patentability. Applicants have an opportunity to amend applications after reading the opinions about their proposed inventions.
International Patent Publication
After 18 months have passed from the earliest filing date, the International Bureau publishes the patent application and the search report worldwide. After 30 months from the earliest filing date, the IB publishes an International Report on Patentability.
The filer may request supplemental international searches. The filer may request a Supplementary International Search, where the ISA looks for more published documents that may not have been part of the initial review. The filer may also have the ISA conduct an International Preliminary Examination, a further analysis of the patentability of an invention. Filers usually request an IPE on amended patent applications to see if the changes increase the strength of the application.
During the PCT search and examination process, inventors can calmly determine in which nations a national patent should be obtained. The beauty of the system is that inventors have more time to consider the question, as well as raise the funds to pay the fees. Using the traditional country-by-country filing, inventors must simultaneously file patent applications in all the countries at once, or nearly so, in order to maintain patent rights.
Patent applications are complicated and international patents more so. If you are seeking an international patent, speak with an experienced international intellectual property attorney at Norred Law, PLLC. Contact us at 817-704-3984, or online.