International Patents
Unfortunately, there is no concept of an International Patent that offers global patent protection. Currently, there is no single patent that grants worldwide coverage. However, there are certain international patent applications that can assist in obtaining patent rights in foreign countries. When pursuing international patent protection, you have three primary options:
1. Directly File in Foreign Countries: Submit patent applications directly to the specific country or countries where you desire patent protection.
2. PCT Application: File a PCT (Patent Cooperation Treaty) Application, also known as an "international application." This allows you to seek patent protection in multiple countries by filing a single application, which can be followed by filing individual applications in the desired foreign countries at a later stage.
It is important to note that these options enable you to pursue patent protection in different countries, but they do not provide a single international patent granting global exclusivity.
Option 1. File Directly in Foreign Countries:
The most straightforward approach to obtaining a foreign patent is to directly file in the desired foreign country. However, it is crucial to complete this filing within one year of your initial filing date in your home country (e.g., the US) for utility patent applications (for design patent or industrial design applications, the time period for filing foreign patents is only six months). If your intention is to file in fewer than 3~4 countries, opting for direct filing in each country is usually the swiftest and most economical path to pursue.
Option 2: Patent Cooperation Treaty (PCT) Patent Applications:
The Patent Cooperation Treaty (PCT) established in 1970 is an international treaty governing patent law. It offers a unified procedure for filing patent applications in member countries, known as Contracting States (refer to the listings for PCT Member Countries and Countries NOT Members of PCT).
When utilizing the Patent Cooperation Treaty, the filed patent application is referred to as an international patent application or PCT application. Additional information about the treaty can be obtained from the World Intellectual Property Organization (WIPO). The PCT Timeline outlines important dates for submitting a PCT application and indicates when national patent applications need to be filed during the national phase. Opting for the PCT application route is particularly advantageous when seeking patent protection in more than 3-4 countries or when the desired countries for patent protection are not yet determined. This approach offers a cost-effective solution in such situations.
File Directly in Foreign Countries vs PCT
When deciding whether to file an international patent application (PCT) or directly file in overseas jurisdictions, inventors often face a common question. Typically, inventors start by filing a local or domestic patent application in their home country to secure initial patent protection for their invention. This allows them to disclose the idea and gather feedback before investing more funds into the invention, such as for product design and prototyping.
Filing in the home country first is important because it enables inventors to explore potential overseas markets without immediately incurring the expenses associated with filing patent applications in those jurisdictions. The Paris Convention, signed by most countries worldwide, allows a 12-month grace period in which an inventor can file a patent application in one member country and then file in other overseas jurisdictions within the first anniversary, retrospectively dating those later patent filings.
This grace period is advantageous because it allows inventors to gather commercial feedback before incurring significant expenses by filing in multiple countries right away.
However, once the 12-month grace period for overseas filing ends, what are the options?
Unless inventors are certain about their foreign markets and have no plans for expanding abroad, the international patent application (PCT) route preserves flexibility and provides patent protection options in over 150 countries worldwide. In other words, the PCT route keeps multiple possibilities open while inventors determine which markets might be of interest.
The PCT route offers flexibility and cost savings in the short term compared to filing directly in multiple countries.
Moreover, if competitors are monitoring an inventor's patent activity, the extensive jurisdictions covered by an international patent application can keep them guessing.
So, what are the drawbacks of an international (PCT) patent application? Firstly, it does not grant an international or worldwide patent. Instead, if filed around the first anniversary of the initial domestic patent filing, the international patent application effectively buys an additional 18 months to explore overseas market opportunities. At the end of this period, inventors must choose the countries covered by the international patent application in which they actually want patent protection. The application then undergoes a conversion process into chosen national or regional patent applications (e.g., local patent applications in Korea, USA, UK, Australia, Japan, China, etc., or regional patent applications in Europe, Eurasia, etc.). This conversion stage incurs significant costs similar to direct filing.
Once converted, the international patent application ceases to exist, and inventors pursue the converted national and/or regional patent applications before the respective local or regional patent offices.
The alternative option mentioned earlier is to directly file patent applications in selected overseas jurisdictions instead of opting for the PCT route. While this may be more expensive in the short term, it can be slightly cheaper in the long run by skipping the middle step of filing the international patent application.
The downside of filing directly in overseas jurisdictions at the first anniversary of the domestic patent application is that it closes the door of opportunity if inventors later identify new market opportunities requiring patent protection. After the initial 12 months following the first patent filing, inventors can no longer backdate any new patent applications, and their original patent application may invalidate later filings for the same invention.
In summary, the decision between an international patent application (PCT) and direct overseas patent filing depends on factors such as market uncertainties, cost considerations, and the inventor's future plans for expanding abroad.
If inventors already know the specific jurisdictions where their markets will be, such as Europe, USA, China, Japan, and Korea, and they are willing to forego the opportunity for patent protection in other jurisdictions, then filing directly in those selected jurisdictions will likely be the more cost-effective option in the long run.
Naturally, specific advice should be tailored to individual cases, but the general information outlined above regarding the advantages and disadvantages of international patent applications versus direct overseas patent filings is a common scenario that we frequently encounter in our active patent practice.
What Type of Foreign Patent Protection Should You Apply For?
To determine the appropriate type of foreign patent protection to pursue, consider the following questions:
Do you intend to file in more than 3-4 countries?
- Yes: It is recommended to proceed with the Patent Cooperation Treaty (PCT) application.
- No: It is advisable to directly file in the foreign countries of interest.
Do you have a clear understanding of the countries in which you want to file?
- Yes: Opt for the option to directly file in the foreign countries of interest.
- No: Consider initiating a PCT application to allow flexibility in determining the countries for patent protection at a later stage.
Will you be filing in countries that are not part of the European Patent Convention (EPC)?
- Yes: Evaluate the possibility of filing a PCT application (direct filing will be necessary for countries not under the PCT). Alternatively, you can consider filing an EPO (European Patent Office) application and subsequently file directly in the countries that are not EPC Contracting States.
- No: Evaluate the option of filing an EPO patent application (direct filing will be required for countries not covered by the EPC).
These questions will help guide you in selecting the appropriate approach for foreign patent protection based on your specific circumstances.
Looking for foreign patent protection?
Our patent team of experienced patent attorneys specializes in PCT and foreign filings. With a strong network of IP firms across the United States, Europe, Asia, and Latin America, we are well-equipped to assist you in obtaining foreign patents. Feel free to reach out to us at daeilpat@gmail.com to see how we can help you get foreign patents.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- How to apply for an international patents: Direct filing vs PCT
- PCT Application: A Guide to Obtaining Foreign Patents
- Mastering the PCT National Phase: Everything You Should Know
- Advantages of filing a PCT international patent application in Korea, not in your home country
- Understanding Priority Claims for Foreign Patent Applications
