The Fourth of Four Articles on the Patent Process

Fritz Klantschi

If you have applied to register a patent in the United States, you also may be interested in filing applications outside the U.S. There are two methods to file a patent application in a foreign country based on an U.S. patent application, (1) Direct filing, and (2) Patent Cooperation Treaty (PCT) filing.  Either method must be initiated within 12 months of the earliest U.S. filing date to ensure the foreign patent application(s) is afforded the priority date of the originally-filed application.

Direct Filing

With direct filing, the patent application is filed directly with the patent office of the selected foreign country(ies) or region(s).  The examination process is generally very similar to that of the U.S.  However, there may be differences in what is patentable and the standard for patentability.  Formal matters, such as translations of the patent application, may be required for certain countries.  Several countries allow for deferred examination.  For example, examination of a Canadian patent application will not start until the applicant requests it.  The request must be made within 5 years of the International Filing Date.  Deferred examination can serve to reduce and defer cost of examination in Canada by awaiting the outcome of examinations in other jurisdictions.  Unlike the U.S., many countries require periodic fees called annuities to be paid to maintain pendency of the patent application.

Europe has for decades examined patent applications at the regional level by the European Patent Office (EPO) and when allowed, the patentee validates the patent in particular European countries chosen by the applicant by paying grant fees and submitting translations.  The European Union (EU) negotiated the creation of a European patent with unitary effect (“unitary patent”) and a unified European patent court.  The European unitary patent will provide protection for inventions in 25 countries across Europe.

Patent Cooperation Treaty (PCT)

A PCT patent application allows a company to delay filing a patent application directly with a foreign country.  A PCT application has two phases, an international phase and a regional/national phase.  The international phase extends generally for 30 months (31 months in Europe and Australia) from the priority date of the corresponding U.S. application.  During the international phase, an International Searching Authority conducts and issues a Search Report of relevant prior art and a Written Opinion as to the patentability of the pending claims.  Generally, no substantive action is required by the applicant during the international phase.  Both the Search Report and the Written Opinion are consultative documents.  An applicant is provided an opportunity to respond to the Written Opinion, but is not required to do so.  At the 30-month date, for most PCT member countries, the applicant must enter the national or regional phase of the PCT.  Entry into the national phase requires the applicant to file national or regional (such as Europe) applications in selected PCT member countries.  The national phase filing(s) is similar to a direct filing discussed above.

Filing a PCT patent application allows the company time to make strategic decisions as to which countries to seek patent protection.  It also provides the company with preliminary feedback as to the patentability of the filed claims and identifies relevant prior art.  The delay also postpones the cost of filing the application in multiple countries and provides an opportunity for the company to determine what, if any, value the patent may have.  Furthermore, the delay allows time for the parent U.S. application to begin the USPTO prosecution process

Some disadvantages of the PCT route are that the total costs are higher and that it will take longer for the application to mature into a patent in the individual countries.