Is Filing a PCT for Foreign Patent Protection Right for You?
A question we receive from many inventors looking to expand patent protection outside of their home country is, “Is my U.S. patent enforceable around the world?” While there is no such thing as a “World Patent” or an “International Patent” there are ways to protect your invention outside of the United States. First, you should ask yourself a series of questions to determine if foreign filing is right for you:
- Do you expect to sell more than $5 million worth of the inventive product in a foreign country?
- Is the product manufactured in a foreign country?
- Do you have a business requirement that requires a patent in a foreign country?
- Is there an infringer in that country?
If you answered yes to one or more of the questions above you will next want to explore the options for foreign filing. One option is to file an International Application under the Patent Cooperation Treaty (PCT). What is the PCT? The Patent Cooperation Treaty or PCT is a multilateral treaty that was concluded in Washington in 1970 and entered into force in 1978. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO), whose headquarters are in Geneva (Switzerland). When it was first established, the PCT system was comprised of 18 members. Currently, the PCT system has 151 contracting states. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.
What are the Benefits to filing a PCT?
- Delays strategic decisions
- Delays costs
- Uniform formality requirements
- Examined by the International Search Authority
- Later filing(s) in some countries can go more smoothly
Below is a flowchart of the PCT application process:
It is important to know that the PCT does not eliminate the necessity of prosecuting the international application in the national phase before the national or regional offices, but it does facilitate such prosecution in several important respects by virtue of the procedures carried out on all international applications during the international phase of processing. The formalities check, the international search and the optional supplementary international search(es), and the likewise optional international preliminary examination carried out during the international phase, give the applicant more time and a better basis for deciding whether and in which countries to further pursue the patent application.
by Aylin Demirci, Senior Counsel, Carr & Ferrell LLP
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