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.
2014 brought exciting changes to inovia. We expanded our global reach, improved existing technology and finally became #1 in the world. Read on for inovia’s 2014 year in review:
This year, inovia finally overtook the title of the #1 filer of PCT applications in the world while maintaining the #1 spot in the United States for the 4th consecutive year (according to Managing Intellectual Property magazine). In addition, our agent reach expanded as clients were able to file into 134 countries (68% of the world!)
In March, the inovia team announced the expansive redesign of the inovia.com platform. With our new layout, we enhanced existing technology and offered clients an even more powerful and comprehensive global instruction tool. These changes ensured that our foreign filing platform, inovia.com, was well placed to handle the volume of cases and foreign filing strategies of our clients.
With 2015 only days away, it’s time to look at the top national stage filing destinations for our clients from the past year:
1. China (12.5%)
2. Japan (8%)
3. Canada (7.5%)
4. Brazil (7.1%)
5. United States Of America (7%)
6. Australia (6.1%)
7. Europe (5.9%)
8. India (5.8%)
9. South Korea (4.7%)
10. Mexico (4.3%)
With the New Year fast approaching, it’s time once again to look at the top national stage filing destinations for our clients from the past year.
In 2013, we retained our status as the largest US filer of PCT applications at the national stage (according to Managing Intellectual Property magazine) and expanded our global network of agents to cover 130 countries. In October, we also announced the acquisition of inovia by RWS Group, the world’s top ranking patent translation company. These changes ensure that our foreign filing platform, inovia.com, will be well placed to complement the foreign filing strategies of our vast array of clients.
Speaking of our clients, let’s take a look at their top national stage destinations in 2013:
1. China – 11.0%
2. Canada – 9.0%
3. Japan – 8.2%
4. Brazil – 7.0%
5. United States – 7.0%
6. India – 6.9%
7. Australia – 6.8%
8. Europe – 5.1%
9. South Korea – 4.4%
10. Russia – 4.0%
Did you know that inovia now hosts educational webinars?
These presentations range in topics, including international patenting strategy and cost-effective foreign filing. To register for an upcoming live presentaiton or view a list of available programs, visit go.inovia.com/webinars.
Our Senior Patent Attorney Jeff Shieh hosted a session last week entitled « International Patenting Strategies ‘101’ ». You can watch the recording of this webinar below.
What did you think of our first presentation? We’d like to hear from you, so please leave a comment below if you have a question or suggestion on content for a future session.