Pablo Meles, Of Counsel, Espinosa Martinez Pablo Meles, Of Counsel, Espinosa Martinez

An “international patent” is a fiction that currently fails to exist. In other words, there is no single world organization that will provide patent rights to all countries with a single application. Instead, the closest notion to the idealization of an international patent is an international patent application via the Patent Cooperation Treaty (PCT) available to residents or nationals of all member countries or contracting states subscribing to the PCT. A PCT international patent application does not provide any rights, rather the PCT application must be followed with a “national” application claiming priority to a priority application.  A priority application is a first filing of an application for a particular invention. The priority application provides a “priority date” that can be used to claim priority in foreign jurisdictions. Note that a U.S. provisional application, a U.S. nonprovisional application, or even a PCT application itself can serve as the priority application.

Why then bother with a PCT application? If your ambitions for protection go beyond the United States, an “international patent application” via the PCT provides a streamlined mechanism for efficiently obtaining a single search and a single examination that will be recognized by member countries. It is difficult to grasp the benefits of the PCT, without knowing a little bit about the alternative of foreign filing without the PCT relying on the Paris Convention or World Trade Organization.

Filing under the convention potentially requires that an applicant file and expend significant costs within 12 months of their priority filing. For example, such convention filings can mean that an applicant wanting to file in five different countries needs to file five different applications that comply to five different application requirements and potentially in five different languages. Hiring attorneys or agents in each country and further obtaining translations for patent applications can increase overall patent costs, particularly at such an early juncture in the patent process.

In contrast, filing via the PCT enables the applicant to just file the PCT international application initially as the priority application or at 12 months from the priority application. One of the major benefits of the PCT application is the time it affords the applicant. Instead of having to file expensive foreign applications at 12 months, the PCT application enables the PCT applicant to push the foreign filing deadlines of the individual “national stage” applications in the different countries out to 30 months from the priority date. This extra time affords the applicant greater insights into their foreign filing decisions. Notably, the extra time can give the applicant an idea of whether the application is patentable or the scope of potential rights. Furthermore, the additional time can give the applicant further insights into the marketability of their invention.

The international phase of the PCT process is a convenient and uniform process that affords the applicant greater flexibility in filing in any number of member countries down the road at the slightly additional cost of the PCT application itself. If the contemplated overall number of countries where protection is desired amounts to only two or three countries, then directly filing in just the two or three desired countries using the old “convention” process at 12 months from priority can make sense.  For example, if you don’t mind losing the flexibility of the PCT process and only want to cover the United States, Canada, and the UK, then filing in the United States as your priority country and subsequently filing in Canada and the UK directly might be a better alternative. However, as a general rule, if you want protection in three or more countries, a PCT process is a better option.

The mechanism for filing a PCT application involves filing within 12 months of a priority application in a patent office of a member country serving as a PCT “receiving office” and further designating an International Search Authority (ISA) one of several patent offices of member countries that perform searches on behalf of the PCT. There are different costs, advantages and disadvantages to selecting each of the ISAs, which can be the subject of another article itself.

The PCT application process enables individual inventors and large applicant entities alike to defer cost and foreign filing decisions to a time when a clearer picture of patentability and marketability can guide ultimate foreign filing decisions. The uniform requirements that the various member countries subscribe to typically means less preparation, variability and cost in an overall global patent filing strategy.  The PCT process also provides the flexibility to extensively file in member countries in the future if the invention is a significant winner. Finally, the PCT process can also provide a quicker means to obtaining granted claims in various member countries via the patent prosecution highway (PPH) if claims are indicated as being allowable in the PCT application or in a priority application. The PPH expedites the processing of allowable claims from a first patent examining office with grant of sufficiently corresponding claims in other offices. These benefits and others are only a few arrows in the quiver of the PCT application process for inventors or applicants interested in a global patent protection strategy.

Patent and intellectual property attorney Pablo Meles is of counsel at Espinosa Martinez in Miami. Contact him at pmeles@etlaw.com.