It’s important knowing how to file a patent if your company is using, making, or selling your invention (whether it is a functional invention or a design), you should protect your right to be the only company doing so. This is why patent protection is so important. Once you obtain a patent, you have exclusive and enforceable right to be the only business commercializing your invention.
Unfortunately, however, patent registration and protection are a part of domestic law, and obtaining a patent in the US only offers protection in the US. If you want to protect your right to your inventions in multiple countries, you will need to apply for a patent in each country where you seek protection. You might (correctly) think this sounds like an insurmountable task. Many countries agree: 151 of them, to be exact. That is where the PCT comes in.
The Patent Cooperation Treaty
The PCT was signed in 1970 and has 151 member countries. It creates a mechanism that allows a streamlined international process for patent applications. Strictly speaking, there is no such thing as an international patent, and eventually you will have to be granted a patent by each country in which you apply. However, the PCT Application process allows you to start that process with one single application that is recognized by all 151 countries as an initial filing of a patent application.
The international patent application process
Anyone person who is a resident or citizen of any of the 151 member countries can file for an international patent. The international patent application process consists of two phases: the international phase, and the national phase. If you are a US business, there is also an additional requirement before you can start the international patent application process.
Requirements for filing an international patent
If your invention was developed in the US, you are not legally allowed to file for an international patent without a foreign filing license. When you complete a domestic (US) patent application at the USPTO, that step also automatically serves as your application for a foreign filing license. In most cases, your foreign filing license will be granted along with the filing receipt that you receive from the USPTO.
In some extraordinary circumstances, you may not receive your foreign filing license immediately – that means that there are possible national security concerns regarding your patent, and you will know within 6 months whether or not you are allowed to file for an international patent. If there are substantial security concerns, the USPTO will inform you that you are not allowed to file for an international patent. In such cases, it might be possible to amend the scope and description of your patent and re-apply for a foreign filing license.
When you have obtained your foreign filing license, you can start the PCT application. It is advisable to do so as soon as possible. If you have not filed for an international patent within 12 months of your initial filing (at the USPTO), your right to do so expires and you can’t obtain international patent protection.
The PCT application consists of a PCT request form, a detailed description of your invention, and proof of payment for the necessary fees. The patent application can be filed online via the ePCT system. Once your application has been filed, a patent search will be conducted and you will be provided with a report as to the patentability of your invention.
After your PCT application has been processed, you typically have 18-30 months to nationalize your patent – i.e. to apply for a final patent in the countries that you seek protection. Deadlines differ between member countries.
Once you have identified the countries in which you want to nationalize your patent, your PCT application will be submitted to the respective domestic authorities and your patent will be evaluated under the patent laws of each country.
Hire an intellectual property attorney
The international Intellectual property attorneys at LawTrades have helped many others through this international intellectual property process and can help you too! If you are looking to file for intellectual property protection outside or inside the U.S., LawTrades is an ideal starting point.