Inventor resources: Filing a Patent Overseas

inovia‘s Small Business Solutions Team works with startups and solo inventors across the globe to assist with the international patent filing process. Led by inovia‘s Senior Patent Attorney, Jeff Shieh, the team walks patent applicants through the stages necessary to gain international patent protection and, ultimately, how to proceed in doing so. As one might expect, we hear many of the same recurring questions from our clients, so we sat down with Jeff to compile a list of these frequently asked questions:

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Q: What happens after I file my Patent Cooperation Treaty (PCT) application?

Answer: After you have filed your PCT application with a receiving office, the International Searching Authority (ISA) will conduct a search and issue a written opinion on the novelty, inventive step and industrial applicability of your invention. Under Article 19 of the PCT, the applicant may amend the claims of the application following issuance of the search report. The applicant may also demand international preliminary examination (IPEA). Under Article 34, the applicant can amend the claims, description and drawings of the application by an International Preliminary Examiner prior to issuance of an International Preliminary Examination Report.

Because there is no “international patent”, the PCT application needs to be filed into each jurisdiction the patent applicant wishes to obtain patent protection in. This step is called entering the national or regional stage (or “phase”) and occurs 30/31 months from the PCT application’s priority date.

Q: Why do I have a 30-month and a 31-month deadline?

Answer: The PCT provides a minimum of 30 months from the priority date to enter the national/regional stage. However, countries may set time limits which expire later than the 30 month minimum. Nearly all jurisdictions have a 30 or 31-month national/regional stage deadline. A copy of inovia’s PCT National Phase Guide, which contains useful country-specific information such as deadlines, translation requirements, etc., can be downloaded here.

Q: How do I claim “small-entity” status?

Answer: Not every jurisdiction offers small entity discounts and the qualifications required differ from one country to another. The procedure for claiming small entity status can differ as well, but generally speaking, the applicant will need to submit a written assertion or declaration that they are entitled to small entity status.

Q: Can I change the number of claims after I file?

Answer: Yes, the claims can be amended both before and after national stage entry.

Q: When is my deadline to file a translation of my application?
Answer: Typically, the application needs to be translated when it enters the national stage. Certain jurisdictions provide extensions for submitting the translation. For more information regarding translation requirements and the availability of extensions, download a copy of our PCT Guide.

Q: If I file into Europe, does that grant protection in all European countries?
Answer: Currently, there is no European patent (though that may change in the future). To obtain patent protection in Europe through a PCT application, the applicant can enter the national stage by directly filing the PCT application into each desired European country. However, do note that not all European countries (e.g. France) allow direct national stage entry of PCT applications. More often, applicants enter the regional stage in Europe by filing their PCT application with the European Patent Office (EPO) which covers every member country of the European Patent Commission. Once the application is granted by the EPO, the applicant needs to validate the application into the desired countries. Further information on the European validation process can be found on our website.

Q: Do I need an attorney to enter the national stage?
Answer: The national stage filing process is largely administrative and often does not require the services of a patent attorney. In fact, this work is often performed by paralegals and secretaries in law firms with little to no patent attorney involvement. Of course, if there are substantive matters that need to be handled at the time of filing, such as claim amendments, a patent attorney should be consulted.

Q: I’m unsure about where to file. How do I determine where it’s best to protect my invention?
Answer: There are many factors to consider when choosing where to file. Where will your invention be made, sold and used? Where are your competitors located? A good strategy is to rank your countries in order of importance and use the inovia 1-click estimate tool (note: registration required) to generate a quote for your desired countries. Then you’ll be able to get a better idea on how to allocate your IP budget. For further tips, check out this article that we posted recently on where to enter the national stage.

As one of the largest handlers of PCT national stage filings in the world, inovia has a huge client base spanning the entire spectrum of technologies. We’ve analyzed the filing trends of our clients for the past few years to see which industries are filing where. Here are the results from 2011 and 2012, which will give you an idea of the top filing destinations for your industry.

Q: What can I expect after I enter the national stage?
Answer: The processes occurring after your PCT application has entered the national stage varies by country. Usually, the application is initially checked to make sure it complies with local formatting requirements and that all necessary forms are in order. Often times, the applicant has a set period of time in which to request examination. During examination, the Examiner will review the application and search the prior art. Rejections and objections can be raised and put forth in an Office Action. It is then up to you and your patent attorney to respond to the Office Action and overcome the rejections. Once you have done so, the application will be allowed.

Have additional filing questions that we didn’t answer here? Get in contact with us! You can also register for a free account today to run a quote for your upcoming national stage entry filing.


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