International Patents, PCT Applications

About Foreign Patent Protection
In addition to applying for a patent in the United States, you should consider seeking patent protection in other countries. By filing an international application or applications in selected countries, you can expand the potential market for your invention. Your United States patent will only protect you against others making, selling, or using
your invention within the borders of the United States. Your United States patent will not enable you to prevent others from making, selling, or using your invention outside the United States.

Foreign patent protection will enable you to prevent others
profiting from your idea in other countries. Many countries will allow you to claim priority from your U.S. application for utility
patents provided that you do so within one year of your original filing date in the U.S. (under the Paris Convention). If you apply for a design patent, you are advised to file corresponding foreign patent applications within six months from the filing date of your U.S. patent application. The proper foreign protection for your invention will depend upon your business plan.

The International Application
An International (or PCT) Application is filed based upon the Patent Cooperation Treaty. A PCT Application allows you to reserve the right to file a utility patent application in over 125 countries (shaded in blue on the map above), for up to 2-1/2 years from your initial filing. The PCT Application should be filed within a year of the date your initial patent application was filed to claim priority from your earliest application. At the very latest, it must be filed before your U.S. patent application is published (18 months from the earliest relied on filing date or when the U.S. patent is issued, whichever comes first), because public disclosure is often a bar to gaining protection in many countries.

What this means is that even if you have filed an application in the U.S., you may also want to consider filing for patent protection in foreign countries. As in the U.S., public disclosure of your invention may affect your chances of obtaining patent protection in a foreign country. If your idea has market potential in the U.S., it may have potential in foreign markets as well. Filing in foreign countries not only increases your patent protection but also increases the market value of your idea, particularly to companies that import and export their products. Furthermore, if you plan to be the exclusive source of the invention and intend to manufacture your product overseas, you should definitely file for patent protection in those countries.

Benefits of a PCT Application
In most cases, a year is not enough time to know where you will need foreign patent protection. Thus, a PCT Application is a good way to plan for foreign patents without having to decide on the specific countries in which to seek protection. Most importantly, you do not need to decide where to file specific foreign patent applications for up to 30 months from your earliest official U.S. patent application filing date. For most, the International Application is the perfect way to avoid numerous foreign applications until much later. This gives you up to 30 months to actively market your invention.

Based on the International Search Report, an International Preliminary Examination Report is prepared. Before the International Preliminary Examination Report is finalized, you have an opportunity to amend your PCT application. The goal is to amend a single PCT application rather than having to amend numerous patent applications in various countries later. Obtaining a positive Preliminary Examination Report on a PCT Application may significantly reduce the cost of prosecuting foreign applications, in many countries.

Immediate Protection in a Foreign Country
In addition to filing an International Application for the reservation of foreign patent rights on a broad scale, you may also wish to begin filing actual patent applications in specific foreign countries. This would be a good idea if you want protection in countries that do not belong to the Patent Cooperation Treaty or if protection is only desired in specific countries.

If you have filed a U.S. design patent application (as opposed to a utility patent application for which PCT protection is available), the only way to obtain foreign protection is to file patent applications in countries of interest. With our network of foreign associates, we can assist you in filing a patent application in any country around the world.

A Canadian patent application is the most common foreign patent request. For many businesses, Canada is a natural extension of the American market. Often times, if a product will sell well in the United States, that product will sell equally well in Canada. Canada may be a vital market in which patent protection will be needed.

Licensing the Invention
If your goal is to have a company pay you for the right to make, use or sell your invention, you should consider filing an International Application as a way of increasing the value of your patent rights. With a PCT Application, you are taking the necessary step to offer a company the potential for worldwide patent rights. An International Application will provide a legal basis for you to receive payment from companies who wish to make, sell or use your invention in dozens of international markets.

Remaining the Exclusive Source
If your goal is to gain patent protection so that you can maintain yourself as the exclusive source for the invention, a PCT Application should be filed to extend the scope of protection beyond the United States. Filing a PCT Application is the most inexpensive way to reserve the right to file patent applications around the world. It gives you an opportunity to later seek patent protection in any or all of the participating member countries.