Where Should I File for Patent Coverage?

U.S. citizens should file a patent application in the United States in the first instance. Unfortunately, there is no worldwide patent. Most countries of the world offer patents, provided that applications meet their requirements for patenting. One rule of thumb is that you should seek patent coverage in countries where there are significant markets for your invention, and where significant competitors are located.

Under the International Treaties to which the U.S. is a member, counterpart foreign applications that are filed outside of the U.S. within specified time frames will be treated as if filed on the same date the U.S. application was filed. The filing deadlines set forth in the Treaties frequently are not extendable. Therefore, failure to meet the filing deadlines can result in loss of patent rights.

The Paris Treaty and the Benefit of Priority

The U.S. and most countries in the world are members of the “Paris Treaty.” The Paris Treaty grants reciprocal rights to patent applicants. After a patent application is filed in a home country, that applicant is granted the benefit of the filing date of such first application when filing patent applications in other countries that are members of the Paris Treaty. The foreign patent office will treat the application filed in its country as if it had been filed on the same date that the first-filed home application was filed. Thus, activity such as sales or publications about the invention that occur after the first-filed home application was filed will not be citable as prior art against the foreign application. To take advantage of the Paris Treaty, the foreign application must be filed within one year of the filing date of the first-filed patent application. This one year time deadline from which priority is desired is for utility patent applications (covering the structure, function, composition, methods, etc. of an invention). A shorter six-month deadline applies for obtaining foreign priority for design patent applications (covering only the ornamental appearance of a useful article – what it looks like, not how it works).

Regional Foreign Filing

U.S. patent applicants may file counterpart applications directly in foreign patent offices on a country by country basis. In addition to such direct foreign filing, some countries have collaborated to create regional patent offices, where one patent application filing can lead to enforceable patent rights in the several countries supporting the regional patent office. The largest of these is the European Patent Office (EPO), covering about 38 European countries. Other regional offices include:

African Regional Intellectual Property Organization (ARIPO), covering 19 English-speaking countries in southern Africa;

Organisation Africaine de la Propriété Intellectuelle (English: African Intellectual Property Organization) (OAPI), covering 17 other, mostly French-speaking African countries; and

Eurasian Patent Office, covering Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russian Federation, Tajikistan and Turkmenistan.

The costs of filing a regional application vary. In the EPO, an application can be filed and prosecuted in English, avoiding translation costs, at least initially. If patent coverage is desired in more than three or four countries in Europe, the cost of filing in the EPO generally would be less than the cost of filing in the individual countries directly.

Delaying Cost Impact of Foreign Patent Filing – Using PCT

One strategy applicable for utility inventions (but not for design inventions), is to file an International Patent Cooperation Treaty (PCT) patent application within one year of the first-filed utility patent application. Filing a timely PCT application preserves the right to file national patent applications in the countries that participate in the PCT, but gives the applicant up to 30 months, and 31 months for some countries, in which to file the national applications. Approximately 150 countries are members of the PCT, including the U.S. and the Regional Patent Offices noted above. Thus, a PCT applicant defers the need to file all national applications within one year of the priority application without losing the benefit of the priority filing date.

The cost of filing a PCT application varies in part by the number of pages of text and the number of drawing sheets. The PCT can be filed with the U.S. Patent and Trademark Office as a PCT Receiving Office, and in English language, thus avoiding translation costs. By default, all member countries are designated as potential for subsequent national filing when a PCT application is filed. No international patent will ever issue based on the PCT application. However, the International Searching Authority (ISA) will conduct a patent search and offer its opinion on the patentability of the claims in the PCT application in an “International Search Report”. If the ISA discovers prior art that is too close to the invention, such that a patent grant is not likely, the application can be abandoned and no further fees for the PCT application or any national or regional applications will be incurred. If the ISA discovers prior art over which the invention can be distinguished, the applicant may amend the claims prior to filing national applications, or may wait and amend the claims during prosecution before national patent offices.

Following a set timeline before expiration of the 30-month period, the ISA will issue a second report called the “International Preliminary Report on Patentability” (IPRP). Once in receipt of the IPRP, the applicant can determine whether and where to file national or regional applications. While the IPRP is not binding on any national or regional patent office, a positive IPRP is a reasonable indication that the national or regional application may likely be considered patentable, such that patents will be issued in the selected countries or regions.

When the PCT application is filed, the applicant may chose the ISA. I frequently recommend choosing the EPO as the ISA, especially if there is a potential that a European patent application will be filed with the EPO in the regional stage after the PCT prosecution is completed. The EPO’s search and examination are well respected by the patent offices in other countries. By choosing the EPO as the ISA, an applicant can learn what the EPO’s opinion will be if a European application is filed. If a positive IPRP is issued by the EPO, the EPO and many other countries will look favorably on the application when prosecuted at the national stage.

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Get help navigating the various International Patent Treaties. Ask Pat about cost-effective strategies to protect your invention by patenting around the world.