Navigating Patent Protection Abroad

Originally posted 2018-11-19 11:21:46

By Irina Pomestchenko| Edited by Alana Ballantyne

The granting of a U.S. patent is a territorial right and does not provide protection abroad (see our blog on Territorial Limits of Patent Law blog for more details). A granted U.S. patent allows stopping others from making, using or selling the claimed invention in the U.S. only. If protection abroad is desired it shall be sought separately for each country of interest. There are several ways to accomplish this. Each approach bears its own advantages and limitations and shall be considered on a case-to-case basis depending on the timing, costs, business strategy, and technology sector.

The Paris Convention Treaty was adopted in 1883 and was the first major step to help inventors to protect their rights in other countries. It is still in force and enables an applicant to file a patent application in their home country establishing “priority date” and then wait up to one year (six months for industrial design) to file subsequent patent applications in other countries where protection is desired.  Thus, the applicant can use its first filing date, so-called “priority date”, as the effective filing date for subsequent application, provided that both countries are contracting States of the convention. The countries to which this Convention applies constitute a Union for the protection of industrial property.

The list of member States can be found here: []

The Paris Convention permits applicants to defer foreign filing costs for up to a year from the priority date. However, upon an anniversary approaching, an applicant must decide on the particular way of filing the application in the countries of interest. There are three principal ways to consider.

First, is so-called “direct filing” through the Paris Convention where an applicant files a separate single application in the patent office of each country of interest. In this scenario, each utility application filed within a year from the first original filing will be entitled to its priority date. One disadvantage of the direct filing is the necessity to conduct separate prosecutions in each foreign patent office. Therefore, if patent protection is desired in multiple countries, this route can be very costly to pursue as the applicant must pay at least filing fees, translation fees, foreign counsel fees for each country, all of which accrue at the one-year anniversary of the priority date making total foreign filing costs skyrocket within a short timeframe.

The second route is rather limiting but may be an attractive choice if an applicant is seeking protection only in Europe. As an alternative to direct filing a single application in each European country of interest, an applicant can file a single patent application in European Patent Office (EPO) which covers countries of the European Union. Despite the rather high filing and examination fees, the major advantage EPO route is a single-place search and prosecution of the application as opposed to the separate prosecutions in each country of interest. A granted EPO application must then be separately ratified in each country, which involves translations and additional fees.

The third way to file an international patent application is through the Patent Cooperation Treaty (PCT). The PCT application is an international application that provides you an option of obtaining rights in any or all (though the cost will be astronomical) of the 152 PCT member States. List of member states can be found here. It is important to understand though, that there is no such thing as international patent and an applicant will eventually have to pursue protection in each separate country through entering, so called, “national stages”. An applicant has an opportunity to enter one or several chosen national stages within 30 months (for most countries and 31 for some) from the priority date or PCT filing date if PCT is the first filed application and no priority is claimed. The PCT application can claim priority to any U.S. (including provisional application) or any other foreign application if filed within one year from such national or foreign filing.  Furthermore, an EPO application can as well be filed of a PCT application later on if practical. Thus, the PCT applicant can defer most foreign filing costs up to 30 months after the priority date, instead of the 12 months provided by the Paris Convention. However, total incurred costs may be greater depending on the number of countries pursued.  It currently costs about $4,000 to file PCT if you have an already completed patent application. Additionally, after a non-extendable 30-month period, additional filing fees for each country where protection is sought must be paid. This makes PCT route rather expensive, though if protection in multiple countries is pursued it may still be economically favorable.

The slower pace of PCT route may present a great advantage for some applicants who need more time to refine the invention, research the market and seek additional investments before deciding on a critical geographical region while inquiring major filing and prosecution costs. In such a scenario, high PCT filing fees may be acceptable in exchange for a prolonged decision-making period.

Alternatively, for some fast-paced technology sectors, where faster allowance and rights acquisition is critical, the “direct” Paris Convention filing approach is more expedient and may as well be more cost efficient if less than three countries are chosen for the protection of rights.

In the United States, the PCT application may be filed in the United States Patent and Trademark Office (USPTO) which serves as one of the Receiving Offices. The PCT application may be filed in English by a U.S. national or resident. It automatically designates all members of the Treaty; however, one formal designation has to be specified. Alternatively, the PCT application can be filed directly in the International Bureau. Though, a foreign filing license may be required in such circumstances.

In addition to the convenience and time delay benefits of PCT, there are other great advantages to consider.  Each international (PCT) application is searched and a non-binding written opinion is issued as to whether the claimed invention appears to be novel, involves an inventive step (non-obvious), and is industrially applicable. This opinion is provided to the applicant by International Search Authority (ISA) within 16 months of the priority date. The applicant has an opportunity to choose among several Patent offices worldwide to act as an International Search Authority to perform the search. There is also an opportunity to conduct an additional supplementary international search (SIS) by the Supplementary International Searching Authority. Requesting one or more supplementary international searches during this early “international stage” of the patent prosecution expands both the linguistic and technical scope of the search and further reduces the risk of new prior art being cited in the later national stage.

The search results provide the applicant with a general idea on the patentability of the invention. It affords the applicant an opportunity to abandon the PCT application before having to expand further resources on a clearly unpatentable invention. On the other hand, if the International Search report is favorable, an applicant has an opportunity to amend claims prior to publication and have an additional option to “demand” an International Preliminary Examination. Similar to choosing ISA, the applicant can select the International Preliminary Examining Authority (IPEA). For example, one can use European Patent Office searchers and preliminary examiners during the PCT International Stage, U.S. Patent Office searchers and preliminary examiners, or European searchers and U.S. preliminary examiners. International Preliminary Examination has to be demanded no later than 22 months (19 months for some countries) from the priority date. The applicant has a right to amend the claims, the description and the drawings before the IPEA before the international preliminary examination report is established. However, no amendments can go beyond the original disclosure in the PCT application as filed. The issued report presents the examiner’s final position as to whether each claim is “novel,” involves “inventive step,” and is “industrially applicable” by 28 months from the priority date and provides the applicants with the insight to the nature of examination that the application will receive upon the entrance to the national stage of a chosen country.  Additionally, depending on how well the Preliminary Examination went, the applicant may pay far less to enter the U.S. national stage.

In other words, for an applicant seeking patent protection in the U.S. among the other countries, the PCT process allows controlling the timing and location of the searches and preliminary examination. Consequently, before the national stage begins the status of the prior art is largely known to lead to more predictable national prosecution outcome which may be contrary to that of directly filed U.S. national application.

Upon the implementation of the American Inventors Protection Act of 1999, provisional U.S patent applications became Paris Convention certifiable. Since then filing U.S. provisional application followed by the PCT application became the most strategic option for the U.S. patent applicant seeking rights both domestically and internationally. By filing the U.S. provisional first, the applicant can start the process with minimal financial commitment though securing major benefits along the way such as priority date, foreign filing license review, and postponement of the onset 20 years’ patent term by one year. Moreover, a provisional application has fewer filing requirements and is easier and faster to prepare and file. The subsequent PCT filed within a year of the provisional patent application will be entitled to its priority date and retain all benefits of PCT which include an option to control the location of search and preliminary examination and obtaining an insight on the patentability of the invention prior to major investment into pursuing protection in multiple countries. Furthermore, the U.S. national stage application stemming from PCT is examined under the Unity of Invention Standard. Under this Standard, closely related inventions (i.e. process-product etc.; refer to MPEP 1850 [] for allowed combinations) can be claimed together in a single patent application. This cannot be accomplished in directly filed U.S. utility applications since it is a subject to U.S. restriction requirements and the second invention will have to be separated and pursued independently in subsequent divisional application consequently escalating filing and prosecution costs.

Singling out the best way to protect your invention abroad is not an easy task and is akin to solving a multivariable mathematical problem. It all depends on a particular technology sector, decision readiness and business and IP strategies. From a financial angle, there is a break-even point of three or four countries when comparing direct filing expenses to that acquired in PCT or EPO approaches. If protection is sought in more than three countries, PCT and EPO routes usually more cost effective. If you are considering to file new international (PCT) application in the U.S., entering U.S. national stage from the prior filed international application or would like to directly file patent application abroad feel free to contact AMD LAW Group for further advice and assistance.


References: pct/en/texts/reservations/res_incomp.html