Cooley Protect

How to Protect Your Invention in Multiple Countries

If you’re not familiar with patents, read this post first: What You Need to Know About Patents

If you’re thinking of protecting your invention in multiple countries, you have two general options: (1) file your first application directly in each country of interest, or (2) file a Patent Cooperation Treaty (PCT) application, and “nationalize” the PCT application in each country of interest at a later date.

Deciding between these approaches can depend on several factors, such as your stage of funding, the maturity of your technology, how quickly you need the protection, and whether you know which markets you’ll be targeting. If commercialization of your invention is imminent, time to patent (i.e., speed) might be your primary goal, and filing patent applications directly in each target market may be appropriate. If your development and/or funding efforts are still ongoing, however, the deferral of costs, as well as of the decision as to where specifically to file, may be desirable. That’s when a PCT application comes in handy.

What is a Patent Cooperation Treaty (PCT) application?

A PCT Application is a “placeholder” utility application that establishes a filing date for your invention, and that can subsequently be “nationalized” in any of the more than 140 countries that are members of the PCT. For a given invention, a PCT application can be the first patent application you file, or it can claim priority to an earlier-filed application (e.g., a U.S. provisional or first-filed non-provisional application). You generally have 30 months (longer in some jurisdictions) from your priority date (from the PCT filing date or from the filing date of the earliest-filed application, if you have one) to nationalize it.

How does the PCT process work?

  • Filing – You begin by filing the PCT application and specifying an International Search Authority (ISA), which is the patent office that will perform an initial review of the claims in your PCT application.
  • Search – Your designated ISA searches for prior art. It identifies what it deems to be relevant prior art in an International Search Report (ISR). It also issues a non-binding Written Opinion (WO) containing its view on the patentability of the claims as filed. The U.S. Patent Office, when designated, aims to issue the ISR and WO within 9 months of the PCT filing date if the PCT application is the first application, or 16 months from the priority date if the PCT application is a subsequent filing. If the WO is favorable, you can enter prosecution early in some jurisdictions. If the WO is not favorable, you can amend the claims during the PCT process, amend the claims before nationalization, amend the claims after nationalization in each individual country, or allow the PCT application to expire without nationalizing it.
  • Publication – The PCT application publishes approximately 18 months after the priority date.
    Supplemental Search Option – You can request a supplemental search during this “international phase” as well, and may amend the claims beforehand.
  • Nationalization – Within 30 months (longer in some jurisdictions) from your priority date, you must “nationalize” the application in any of the more than 140 member countries that you desire. At this point you will incur costs for translation preparation and application filings in each of your selected jurisdictions.
  • Foreign prosecution – Each of your nationalized patent applications will then follow their own respective, country-specific procedures for prosecution to grant. The PCT application itself simply expires, and never issues as a patent. There is no such thing as an “International Patent.”

What are the benefits of PCT applications?

  • Time and cost deferral: By filing a PCT application instead of filing directly in each country of interest, you get up to 30 months from your earliest filing date (longer in some jurisdictions) to consider your international filing strategy, obtain funding, refine your claims, etc.
  • A search is included: The ISR and Written Opinion provide a preliminary indication of material prior art and patentability. They can inform your decision about where to file, as well as the claims to pursue. Additionally, any claims deemed patentable in the Written Opinion qualify, in some jurisdictions, for expedited entry into prosecution via the Patent Prosecution Highway.
  • Publication: The published PCT application is free advertising and creates prior art against competitors.
  • Accelerate US examination: A parallel U.S. non-provisional patent application may be picked up for examination by a U.S. examiner sooner because the search in the PCT application has already been conducted.