Helpful Information / Articles - Taylor Russell & Russell, P.C.

An inventor or business who wishes to patent an invention in a foreign country has the option of filing a patent application in every foreign country in which protection is desired. If protection is desired in only one or a few foreign countries, this may be the best option. If the country where protection is sought is a member of the Paris Convention and the applicant has already filed a United States application, the applicant has twelve months from the filing date of the United States application to file in the foreign country and request the filing date (called the priority date) of the United States application.

Alternatively, one can file a single application under the Patent Cooperation Treaty (PCT) and designate the signatory countries of the treaty for patent protection. The benefits of filing a PCT application are many, but one of the most important is delaying the time for entering the national patent office of each country, which also delays the payment of national fees. Usually, a patent application is filed in the United States (although this is not required). The applicant then has a twelve month window in which to file an application for patent under the PCT and claim the benefit of the original United States filing date, which becomes the priority date of the international application. This is important, since most foreign countries do not have a one year grace period for on-sale bars and disclosures of the invention to the public. However, once the U. S. application is filed, the inventor may disclose or sell the invention and still be able to patent in a foreign country using the benefit of the U. S. filing date as long as the PCT application is filed no later than one year after the U. S. application.

The PCT allows the application to be filed (called the "international application") in one patent office ("the receiving office"). The contents of the patent application are similar to a United States application and the applicant designates the countries in which patent protection is sought.

The receiving office then conducts an International Search. Within four or five months of the filing of the international application, the applicant receives the results of that search, called the International Search Report, which lists what the receiving office considers relevant prior art which may pertain to the patentability of the invention. The application and the search report are usually published 18 months after the priority date of the international application.

After the international search report is received, the applicant has the option of requesting an international preliminary examination for most PCT countries, which is termed a "Demand". This delays entry into the national stage in most elected countries for 30 months from the international priority date. This is an advantage, since it gives the applicant time to determine the commercial value of the invention before having to enter the national phase in each country where a patent is desired and delays the payment of those national fees along with translation fees. When filing the demand, the applicant can also amend his application based on the results of the international search report so as to further distinguish over the prior art references.

The result of the international preliminary examination is an opinion on the patentability of the invention. This opinion is provided to the applicant and to the elected states. This gives the applicant additional information concerning the likelihood of obtaining a patent when the national phase is entered. If the applicant does not think the chances of obtaining a patent are good or if the commercial value of the invention does not appear to justify further investment in patent protection, the applicant can withdraw or abandon the international application and the process ends. Based on the results of the preliminary examination, the applicant may choose to enter the national phase and may again amend the application.

When the applicant chooses to enter the national phase, the fees for each elected country must be paid along with any necessary translations. Whether the applicant files via the PCT route or files directly in the foreign country, when the patent application enters the national phase, the process is the same. The application must meet the that country's criteria for issuance of a patent. At this time, an attorney or agent in the foreign country skilled in patent prosecution usually must be retained to ensure compliance with the national procedures, requirements and critical dates.

TAYLOR RUSSELL & RUSSELL, P.C.
4807 Spicewood Springs Road
Building Two, Suite 250
Austin, Texas 78759

Telephone: 512-338-4601