How to Apply for an International Patent

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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.

WIPO’s September PCT Newsletter Recap

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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. 

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Five new Paris Convention countries added to the inovia agent network

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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
Language: Spanish
Agent: Bufete Mejia & Asociados
Power of Attorney: Yes* (general and specific options)
Assignments: Yes**
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.

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Friday Foreign Filing Roundup

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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.