With today’s international markets, foreign competitors and overseas manufacturers, it’s no longer sufficient to simply obtain patent protection in your home country. More and more applicants are filing abroad, resulting in record numbers of foreign applications. So what are the steps in filing your application internationally?
One way to file a patent application in a foreign country is by filing via the Paris Convention. Typically, applicants will first file a patent application in their home country. If that home country is a member of the Paris Convention, the applicant has 12 months to file a corresponding application with the patent office of another contracting State. Under the Paris Convention priority right, any later-filed application will be afforded the earlier filing date of the first application.
Once the foreign application is filed, it will be examined by that country’s patent office, and the applicant will need to overcome any rejection issued by the Examiner.
Another common process for filing your application abroad is to file an international application under the Patent Cooperation Treaty (PCT). This option is especially attractive for applicants unsure of where they will ultimately need patent protection or those looking to defer costs as long as possible.
Applicants typically start the PCT process by filing an application in their home country, thus establishing the priority date. Similar to the Paris Convention, they then have 12 months from the priority date to file a corresponding PCT application. The PCT application does not directly result in an issued patent; rather, it serves as a placeholder for future international filings. There are 148 current members of the PCT, and the PCT application can be filed into any of these member States. 30 or 31-months after the priority date, the PCT application enters the national stage, meaning that the applicant files the PCT application into the jurisdictions where patent protection is desired. The patent office of each jurisdiction then examines the application, and the applicant again needs to overcome these rejections before the patent is issued.
This is just a quick overview of how to file your application in other countries. Further information on the Paris Convention and the PCT can be found on our website.
We’ve compiled a shortlist of highlights from WIPO’s PCT newsletter, an excellent resource for IP professionals and patent applicants looking to stay on top of changes to the PCT system. Please see below for a recap of the September 2014 edition:
Electronic Filing and Processing of International Applications
ePCT-Filing now available at Eurasian Patent Office!
The Eurasian Patent Office as receiving Office recently notified the International Bureau that it accepts international applications filed using the ePCT-Filing function in the ePCT Portal, effective September 1, 2014. This brings the total number of receiving Offices to six.
PCT Patent Prosecution Highway (PCT-PPH) Pilots
New pilots start between the State Intellectual Property Office of the People’s Republic of China and the Icelandic Patent Office, the Intellectual Property Office (United Kingdom), the Israel Patent Office and the Swedish Patent and Registration Office.
Under these pilots, faster examination in the national phase in one country is available on the basis of a PCT application with a positive written opinion from either the International Searching Authority (ISA) or the International Preliminary Examining Authority.
To keep up with our clients‘ needs, we’ve added new countries and agents to our global network. Please read on for the summary of each country and details regarding agents and forms:
Country code: PA
Deadline: 12 months
Agent: Bufete Mejia & Asociados
Power of Attorney: Yes* (general and specific options)
Late filing: Translation can be filed late (due within 2 months of filing date, $165 late fee for agent)
Excess Claims Fee: No
Examination Request: Deferred
* Power of Attorney document and the included Notary Certificate need to be completed and then legalized by The Apostille or nearest Honduran Consulate. Must be filed within 2 months counted from the filing date.
** Assignment of Invention (one document per inventor) needs to be legalized by The Apostille or nearest Panamanian Consulate. Must be filed within 6 months counted from the filing date.
We just got crushed by a massive Nor’easter in New York City, stay warm out there everyone! Read below for breaking news in foreign patent filing for the week of February 10th:
- In honor of the Olympics, here are 17 patents that made winter sports possible, including the snowboard and bobsled!
- The start date for the Europe’s Unified Patent Court has been pushed back to 2016 at the earliest.
- Starbucks is claiming trademark infringement on parody store, „Dumb Starbucks„. According to spokesman Jim Olson, „we appreciate the humor but they can’t use our name. It’s a protected trademark. It’s our trademark.“
- inovia news: We recently added 5 new direct (Paris Convention) filing destinations!
We will be attending the Global IPO and the AUTM Conferences next week in San Francisco. Come say hello if you will be attending! See you back here next week for more IP updates.
A provisional application is a patent application filed with the USPTO that serves as a low-cost option for establishing a priority date. Like regular patent applications, provisional applications comprise of the specification and drawing (if drawings are necessary for the understanding of the invention). However, provisional applications are not required to have claims, an oath or declaration from the inventor or an Information Disclosure Statement (IDS). Furthermore, provisional applications are not published nor are they examined on the merits. Currently, the provisional application filing fee is $260 for regular applicants, and $130 and $65 for small entities and microentities, respectively.
Wouldn’t it be a perfect world if an inventor could file a single application to get global patent protection? Or maybe even on a lesser scale, say, an Asian patent or a North American patent. Does an international patent even exist, and if so, how do you apply for one?
Unfortunately, a global patent doesn’t exist, and it’s unlikely that a patent covering the entire world will come into being anytime soon. There has been much discussion on the creation of such a system, but daunting obstacles must first be overcome.
To keep up with our clients‘ needs, we’ve been busy adding several new countries and agents to our global network. Here is a recap of what we’ve added in the last few months:
We briefly discussed the difference between PCT and Paris Convention filings here and here. Let’s go into a little more detail.
Happy New Year to our readers! Here’s some foreign filing news to kick off 2013…
For many applicants, the Patent Prosecution Highway (PPH) is an invaluable resource for expediting and reducing the costs of foreign applications. The PPH is a work-sharing agreement between 2 patent offices wherein a finding by one patent office that at least one claim in the application is patentable will allow the applicant to fast-track the corresponding application in the other patent office.
On December 21, 2012, the United States Patent and Trademark Office (USPTO) announced the launch of a permanent PPH program with the Taiwan Intellectual Property Office (TIPO), building upon the pilot PPH program that had commenced on September 1, 2011. With more US applicants interested in seeking patent protection in Taiwan, this PPH program will surely be a welcome addition to the 30+ PPH agreements the USPTO already has in place.
While we’re on the topic of Taiwan, a request we often receive from clients is to file their PCT application into Taiwan at the national stage. Unfortunately, Taiwan is not a member of the Patent Cooperation Treaty and the PCT application cannot be filed there at the 30/31-month deadline. Even worse, by the time the 30/31-month filing deadline rolls around, the deadline for filing into Taiwan has long passed. Taiwan, although not a party to the Paris Convention, does recognize priority claims from contracting members. That means that an applicant must file into Taiwan within 12 months from the earliest priority date if they wish to obtain patent protection there.
Did you know that inovia recently launched a Paris Convention filing service, allowing you to file directly into 17 countries, including Taiwan? Register for a free inovia.com account to get an instant quote for direct Paris Convention filings.
Paris Convention vs. PCT
Patent applicants planning to file for patent protection abroad understand that timing is critical. For this reason, it is essential to evaluate the two avenues available for foreign filing: the Paris Convention and the Patent Cooperation Treaty (PCT). Both treaties accomplish the same goal of acquiring protection in chosen jurisdictions, but their deadlines differ in terms of timing available to acquire funds, determine where to file, etc.
In the below chart, you can see that both the PCT and the Paris Convention require an applicant to file 12 months from their earliest priority date. If it is important to push the invention fast, filing via the Paris Convention may be the safest route to ensure quicker examination (and hopefully, quicker grant).
Applicants work with their attorneys to determine which method is best-suited for their invention. Generally, direct filing via the Paris convention is the preferred method when filing into 3 or fewer countries because it tends to be more cost-effective. Direct filing allows the applicant to customize their application to each destination while, under the PCT, one uniform application is sent to all chosen filing destinations.
Patent Cooperation Treaty
146 contracting states. Notable exceptions include Taiwan and Argentina.
174 contracting states.
Deadline for filing a PCT application is 12 months from the earliest priority date. Then applicant has 18-19 months before the application needs to enter the national stage.
Deadline for filing directly into a Paris Convention country is 12 months from the earliest priority date.
The same PCT application is filed into each desired PCT member country.
The application can be custom-tailored for each jurisdiction.
Examination of application can be delayed due to 18/19 month period before national stage entry. This is good for applicants hoping to delay costs.
Examination occurs sooner, so this is good for applicants wanting quicker issuance of patent.
For applicants wishing to file into several countries or want to keep open the option of doing so, a PCT application is the more cost-efficient route.
For applicants who know they only want to file into 1-3 countries, filing directly via the Paris Convention is usually the less expensive route.
For inovia registered users:
You can get an instant direct quote for your patent; simply enter your patent number and use your provisional application to enter your specs. Our streamlined approach allows you to file into multiple countries with one single instruction, at a fraction of the cost. Try running a quote for yourself, or contact us to learn more about our service suite.
What is the Paris Convention?
The phrases „direct filing“ and „Paris Convention filing“ are synonymous with each other; the process of applying for patent protection under the Paris Convention is commonly referred to as direct filing. Patent applicants who file their application under this treaty are granted the same intellectual property rights in each member country that they would receive in their home country.
As depicted in the below diagram, a patent applicant has exactly 12 months from their priority date to file directly into the foreign countries that they seek protection in. Keep in mind that no extensions can be given after the 12-month due date as it is a hard deadline.
inovia’s global instruction platform now handles direct filings in 17 countries: Argentina, Australia, Brazil, Canada, China, Eurasia, Europe, Germany, Israel, Japan, Korea, Mexico, Russia, Taiwan, Ukraine, the United Kingdom, and the United States of America. If you’d like country-specific information about any of these destinations, please contact us. You can also read more about our direct filing service here.
Next: In Part 3 of this series, we’ll compare the processes of PCT national stage entry and direct (Paris Convention) filing.