International Patent Filing Options

 

INTRODUCTION:

Clients have from time to time inquired about international patents.  However there is no such thing.  Patents are issued and enforced by individual countries.  There is, however, an international patent application.  Such an application is filed through the regulations of the Patent Cooperation Treaty (PCT).  Approximately 150 countries, including the US, are members of the PCT.  Typically, I advise filing a US application at the start (either a provisional or non-provisional) and, if the expense is merited, filing a PCT application within 12 months of the US filing date.

 

DISCUSSION:

An alternate strategy is available.  Initiating the patent process via the PCT and later filing a US application based upon the PCT application.

 

There are advantages and disadvantages.  First, (and usually most important), the cost of filing a PCT application are greater than filing a US non-provisional.  The PCT filing fees are certainly much greater that filing a US provisional application.

 

The calculation of fees differs between the PCT and US fee schedules.  However, a PCT application fee may be at least $2,800.00.  A US non-provisional application for a small entity is approximately $850.00.  For a micro-entity, the US fee may approximately $425.00.  For the initial favored provisional application, the US fee may be $150 for a small entity and $75 for a micro-entity.  See my article entitled Micro-entity Discounted Fees.

 

Note, under the typical scenario, an inventor starts the patent process by filing a US provisional application.  Within 12 months after filing, the inventor that desires to protect international patent rights must file a PCT application and pay the required fee.  That PCT filing starts the Chapter 1 International Phase.  That action holds the inventor’s place in line and preserves the initial filing date established by the US provisional application filing.  18 months after starting the Chapter 1 phase, the inventor must select the individual countries he/she desires foreign patent protection and enters the PCT National Phase.  This National Phase involves initiating patent applications in individual country jurisdictions (selected by the inventor).  Often inventors elect to proceed within the European countries by filing a single application with the European Patent Office (EPO).

 

Time-Line:

Note the time-line starts with the initial US filing, followed by the PCT Chapter I International Phase 12 months later, then followed by the PCT National Phase 18 months later, i.e., a total of 30 months.  As discussed below, the US filing fee expense may be deferred for this same 30 months by initialing a PCT application.

 

PCT Search Report and Opinion of Patentability:

One advantage of filing a PCT application is that the filing fee includes a search report and opinion of patentability.  (However this may not be a through as a commercially obtained prior art search conducted by a private search firm, an approximate $1,000.00 expense.)

 

Alternate Path:

As suggested above, an alternate path is to initiate the filing for patent protection by filing a PCT application. Once filed, you do not have to do anything further for 30 months.  (Note absolute novelty is required for protection at the time of filing, e.g., no prior industry demonstrations or offers of sale.)

 

The PCT application will be published 18 months after the filing date.  This is similar to US law for a non-provisional application.

 

Note again that your application will be “examined” by a designated International Searching Authority (ISA) and a search report provided to you with an opinion of the patentability of the application claims.  This can be useful in determining whether to proceed with the patent process.

 

You will have the option of initiating a US application based upon the PCT filing within 30 months of the PCT filing date.  You will further have the option to file the US application under 35 USC Section 371 or as a “continuation application” under 35 USC Section 111(a).  There are advantages and disadvantages depending upon which path you take.

 

Typically, a US counterpart application to the pending PCT application is filed under Section 371.  This is a rather easy process.  It requires payment of the US filing fee (which has been deferred for 30 months).  The application will take its place in line for examination in the USPTO.  At the time of filing this PCT based application in the US, there is no opportunity to add additional matter to the specification of the application.  It is also not possible to request expedited examination under the USPTO “Track One” program.

 

Adding new matter:

As mentioned above, there is an option to file the US application as a continuation application of the pending PCT application.  Again, this has to be initiated within the 30 months of the PCT filing.  This application is filed under Section 111(a).  There are several advantages to filing in this manner.  The option of filing a continuation application allows for the inventor to add new matter to the application (transforming the application to a “continuation in part” or CIP application).  Recall, however, the application has been published at this point and the added matter cannot be merely an obvious variation that was disclosed in the published PCT application.

 

Expedited US examination:

Also the inventor can elect to pursue expedited examination via USPTO Track One by paying the requisite fee.  This can be advantageous since examination of the application has already been deferred 30 months and, presumably, the inventor’s market evaluation has determined that there is value in achieving issuance of a patent to deter competitors.

 

Document filing:

The inventor electing to file a “by-pass” application under 35 USC Section 111(a) can also now avoid having to file a copy of the original specification and drawings (filed as part of the PCT application).  This can be avoided by simply incorporating the original filing documents by reference.  (The USPTO required Application Data Sheet has a check-mark space to affect this incorporation.)

 

Disclaimer:

Another advantage is the ability to file a disclaimer of any adverse admissions that may have been made by the inventor during the PCT proceeding stage, i.e., a Hakim disclaimer.  This can be relevant if the inventor has made amendments to the PCT application under PCT sections 19 or 34 or has made a PCT Chapter II Demand.  Again, this is a feature of entry of the PCT application as a continuation application under Section 111(a) in contrast to entry into the National Phase via Section 371.

 

CONCLUSION:

The difference between utilizing the standard “national stage” entry of a PCT application into the US via Section 371, in contrast to using the “by-pass” procedure of filing a US application as a continuation application citing the earlier but co-pending PCT application by reference/priority application are subtle.  What is useful is realization that the inventor may choose to file the first application via the PCT versus filing first in the US and filing a PCT application within 12 months of the first US filing.

 

The net effect is that the inventor can pay the higher PCT filing fees first but defer further action and expense for 30 months, plus obtain the PCT Search Report and Opinion of Patentability.  The inventor has the flexibility to initiate an earlier examination within the 30 months by filing a continuation application within the USPTO.

 

It will be appreciated that this may be more cost effective than rushing to file a US provisional application, then filing a US non-provisional application with fees simultaneously filing PCT application with filing fees.

 

The best strategy will vary with each situation and budget.

 

© David McEwing, 2020