A Short History Lesson
In 1790, when Thomas Jefferson led the US Patent Commission, there was only one way for a US company to obtain patent coverage outside the United States. You had to file your patent application simultaneously in the US and in whichever other countries you selected. I imagine this was difficult to coordinate.
Beginning in 1883, the Paris Convention for the Protection of Industrial Property made life easier by creating a “priority right,” thus establishing an important rule that still exists today. Specifically, the priority right allows you to use the filing date of your patent application in a first country as the effective filing date in any other participating country, as long as you file in the second country within 12 months (utility patent) or 6 months (design patent).
The date of your first filing is known as the “priority date,” and relying on it in a second application is called “claiming priority” to the earlier application. Basically, what it means today is this: when you file a United States utility patent application, you have 12 months to file on the same invention internationally. If you do not do so, you will lose your patent rights outside the US.
This was better than nothing, and a huge improvement over the earlier rules. But, as it turns out, people don’t often know exactly where they’d like to file internationally within that 12-month window. And it can get quite expensive, with filing costs today ranging from about $2,000 to $10,000 per country. Some places also require translation into a local language.
So, in 1970, the Patent Cooperation Treaty (PCT) created a unified international patent application. Instead of filing in several countries at the 12-month deadline, you can instead file a single PCT application to hold your place in line until the 30-month point (effectively an 18-month deadline extension). At that time, you must take another step, known as National Phase Entry, in whichever countries you choose. Still expensive, but the PCT process gives you a much longer time to figure out your plan of attack and related budgeting.
Fast forward to the 21st Century.
US utility patent filers continue to have two filing options to pursue international patent coverage no later than the 12-month deadline:
A. File a Paris Convention application in one or more countries of your choosing; and/or
B. File a PCT application and hold your place in the 152 member nations of the Patent Cooperation Treaty for another 18 months (up to 20 months in some jurisdictions).
What Happens When You File a Paris Convention Application?
A Paris Convention application in any given country is treated essentially the same as any other patent application in that country. If you filed first in France, for example, and then file a Paris Convention application in the US, that application will get examined and be handled by the United States Patent & Trademark Office just like any other US patent application. Paris Convention applications do not have their own special category in the Patent Office. They simply claim priority to a foreign application. After that, nothing’s different.
What Happens When You File a PCT Application?
The PCT application, on the other hand, is quite different in many ways.
1. The PCT application looks just like a regular application, but it isn’t substantively examined. It won’t ever become a patent unless you convert it into one or more national patent applications in the National Phase. It’s simply a placeholder awaiting your decision to take the next step wherever you decide to go with it. If you miss your deadlines, the PCT simply expires.
2. The PCT application will, however, be administratively reviewed, and you will be invited to make corrections, etc., to the extent such things are allowed. For example, if the font size in your formal illustrations is too small, you’ll be invited to fix that. The idea is to help you get your application squared away in a single forum, before you submit it to several countries individually later on.
3. You’ll receive what’s known as an International Search Report and Written Opinion (ISR/WO) around four months after filing. This is a preliminary, non-binding report of how your patent application’s claims are expected to fare in the examination process. As mentioned, it’s non-binding. So there’s no requirement to respond. However, it can be quite enlightening, and a positive result can be leveraged to speed the process up down the road.
4. When you file your National Stage Application later, this is considered to be the same as asking the countries to examine your already-existing application. Accordingly, it must be converted to the National Phase “as-is.” However, in most cases you can then file a preliminary amendment, etc., to make permissible changes to the application after it’s formally entered the National Phase. For example, you might want to tweak your claim language in light of something your competitor has begun selling.
5. National Stage Applications are treated a bit differently than “normal” patent applications. In the US, for example, a National Stage Application cannot be prioritized under the Track One program, and it is examined under the international “unity of invention” standard, rather than the usual US restriction rules. Other than that, however, these applications generally follow the same course as a standard US application.
6. The PCT process applies only to utility patent applications, and is not available for design patent protection.
Keeping this brief history lesson in mind can help you understand your international filing options, and why they exist in the first place. As always, if you have any questions, please feel free to contact us. Good luck!
Blog Post © 2019 Kolitch Romano LLP
Photo © 2019 Dave Bourgeau
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.