Foreign Patent Service
In addition to our expertise with US patent laws, all members of our patent prosecution team are experienced with foreign filing procedures. This experience extends to filing Patent Cooperation Treaty (PCT) international applications, direct Paris Convention filings in foreign countries, and foreign prosecution strategies to reduce processing costs and expedite issuance. Our firm has coordinated with foreign partner law firms to file thousands of applications around the world, and our network of foreign partner law firms enables us to handle filings in every country where meaningful patent protection can be obtained.
International Patent Filings
The Patent Cooperation Treaty (PCT) is an international treaty, which is available to residents of member countries, referred to as contracting states. A patent application filed under the PCT is referred to as an international application. The PCT application does not result in a granted patent, but instead provides a period of time (e.g., 30/31 months) from the priority date in which to file in individual countries. The PCT application, with at least one US resident, can be filed with the USPTO, which acts as a receiving office (RO). If no applicant (i.e., company or inventor) is a US resident, then the PCT application can be filed directly with the International Bureau of WIPO. The PCT application must be filed within 12 months of the priority date (the filing date of the earliest application from which priority is claimed).
During the PCT phase, the International Searching Authority (ISA) will perform a search. The search will generally provide an opinion on patentability. If the search results are favorable, the applicant may feel more comfortable spending the money to proceed with national filings based on the PCT application. If the search results are not favorable, the applicant can decide to amend the claims or abandon the PCT application.
National Filings
The US is also a member of the Paris Convention, which enables applicants to claim priority based on applications earlier filed in member countries. To obtain priority to the filing date of a US patent application, an applicant must file an application in a Paris Convention member country within 12 months of the US filing date. The US has a one year grace period from first disclosure before an applicant is barred from filing a patent application. It is cautioned that the one year grace period has exceptions and a detailed analysis of the facts is needed for each situation. In contrast to the US, most foreign countries do not have a grace period. As such, to enable a national application to be filed in a particular country, the invention should not be disclosed before the US application is filed. If the applicant needs more than the 12 months to decide on whether to file national applications in foreign countries, then the applicant should consider filing a PCT application instead. Note that there are countries that are not members of the PCT, for example, Taiwan (which will require filing by bilateral treaty within 12 months of the filing of the US priority application).
