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Technology Transfer

Entrepreneur's Toolkit - Obtaining International Patent Protection

PCT Overview, a description of the steps occurring in the PCT process, beginning with an initial national or PCT filing at month 0, a PCT filing (if not the 0-month filing) at 12 months, an international search report (ISR) and written opinion of the international search authority at approximately 16 months, filing of optional claim amendments 2 months from receipt of the ISR, international publication at 18 months, optional filing of a demand and Article 34 amendments and/or arguments at 22 months, optional filing of a request for supplementary international search at 22 months, receipt of a supplemental international search report and establishment of an international preliminary report on patentability under Chapter II at 28 months, and national phase entry at 30 months

Consider the Options

Assuming you have decided that patent protection is right for you and that you want international protection, your next step should be to determine what type of patent protection you want to seek. When people think of patents, they typically think of utility patents (patents that protect function), but other common types of international patent-like rights include industrial designs (protecting ornamental designs applied to products like design patents do in the U.S.). You might consider other patent-like rights, or use the USPTO IP Identifier Tool to help you decide.

Process Options (International Utility Patent)

Once you decide that utility patent rights are the right option for you, the next step is to determine whether to start the process with (a) a provisional application, (b) a nonprovisional application, and/or (c) an international application under the Patent Cooperation Treaty (a PCT application).

The Provisional/Nonprovisional/PCT Decision

See the discussion here about whether to start the process with filing a provisional application or a nonprovisional application, which includes reasons why you might elect to start with a provisional application rather than a PCT application. Just know: if you start the process with anything other than a PCT application and want rights internationally, you must file your PCT or other foreign patent application no later than the twelve-month anniversary of the earliest application to which you wish to claim priority. Most people use a PCT application to begin seeking international patent protection, but be aware that if you want protection in a country that is not one of the countries participating in the PCT, you'll have to file in that country at the same twelve-month deadline.

One Typical Process (International Protection)

This process is an international continuation of the one typical domestic (U.S.) process described here.

  • No later than the twelve month anniversary of the first-filed application to which you want to claim priority, you file your PCT application (and any applications in countries not participating in the PCT you want to have protection in). The PCT application cannot mature into a patent on its own, but will be examined for purposes of patentability. It holds your place in line for PCT member countries until thirty months after the anniversary of the first-filed application to which you claim priority. The application is filed at a receiving office (RO), such as the U.S. Patent and Trademark Office (USPTO).
  • When you file your application, you designate and pay for an International Searching Authority (ISA) to conduct the patentability search for your invention. You choose among the U.S., European, Korean, Japanese, Australian, Russian, Israeli, or Singaporean Patent Offices for reasons that can include varying costs, timeliness of search, subject matter of your invention, and where you intend to seek protection.
  • Generally, approximately four months after you file the PCT application, you receive the International Search Report (ISR) and Written Opinion (WO) from the ISA. In many instances, this is the first feedback you will receive regarding patentability of your invention, even if you filed a U.S. nonprovisional application first.
  • Your PCT application will be published for public availability, with the ISR, eighteen months after the earliest priority date claimed in the application (the date of filing of the earliest, first application).
  • There are two opportunities to amend the application and/or respond to the ISR and WO, as noted in the graphic above, but it has become less common for applicants to take advantage of those opportunities.
  • No later than thirty months after your earliest priority date, you will file applications in the individual countries or, in a few cases, regions, in which you want to continue to pursue protection. This is generally an expensive step, so you have carefully consulted with your patent agent or attorney leading up to this decision, and have given adequate time to coordinate with attorneys in each country/region of interest prior to filing.
  • You have elected to file in China, India, Europe (which has a unified patent office for examination), Japan, and Australia. Translations of your applications are prepared and filed with or shortly after your application is filed in Japan and China. In each of these countries, you are now approximately at step 2 of the process described here. Note: in countries other than the U.S., you will now begin paying annuity fees every to keep your application in force.
  • In Europe, once the process is complete and you are found entitled to a patent, you have an option of selecting a unitary patent protecting many European countries, as well as validating the patent in individual countries in Europe. Yearly annuities will be due in each country in which validation occurs, and translations of part or all of the patent will be necessary in some countries.

Industrial Designs/Design Patents

The Paris Convention allows for a design patent application (U.S.) or industrial design application (outside the U.S.) to be filed within six months of an earlier application in another country and to claim priority to that earlier application (have the effect of being filed on that earlier date). These international rules allow you to delay the cost of filing in other countries for six months while still being able to obtain protection if other similar designs are created or become public.