Foreign Patent Filing

Using the PCT System

In the past, to obtain patent protection in foreign countries, separate patent applications had to be filed in each country of interest within one year of first having filed an application in the United States. Oftentimes, this was prohibitively expensive, especially where an invention had not yet proven commercially successful. However, the international Patent Cooperation Treaty ("PCT") system, adhered to by 151 countries, can be used to advantageously and economically delay such filings, especially in light of certain recent changes.

The first step for entering the PCT system is to prepare and file a PCT patent application, the core of which is similar to a "regular" U.S. patent application, i.e., a description and drawings of the invention, and a "claims" section. A PCT application may be filed as a first step in the patenting process; however, if a U.S. patent application is filed first, a corresponding PCT application must be filed within 12 months to preserve the right to eventually file in foreign countries under the PCT system.

Once filed, an application's progress through the PCT system is broken into two main phases, commonly referred to as "Chapter I" and "Chapter II." In Chapter I, the PCT International Searching Authority ("ISA"), typically either the U.S. Patent and Trademark Office or the European Patent Office, performs an international patentability search and issues an International Preliminary Report on Patentability ("IPRP"). These give the applicants an indication of whether or not it is "worth" it to proceed with National Phase patent filings later on.

It used to be the case that once Chapter I was completed at 20 months after the earliest filing date (the filing date of the PCT application or the first U.S. application, whichever was earlier), the applicant either had to enter Chapter II, at additional cost, or enter the "National Phase," where individual applications, based on the PCT application, were filed in foreign countries. Under recent changes to the PCT system, however, applicants can now stay in Chapter I until 30 months after the earliest filing date (the same as if they had entered Chapter II), resulting in an extra 18 months of delay without further cost.

Although an IPRP is prepared as part of Chapter I, a more "interactive" preliminary examination is possible by paying an additional fee to enter Chapter II, before 22 months from the earliest filing date. In Chapter II, the ISA still examines the invention for patentability and issues an IPRP. However, unlike Chapter I, it's possible for an applicant to communicate with the patent examiner and to amend the application prior to the IPRP's issuance. This allows any problems with the application to be worked out beforehand, hopefully resulting in a favorable IPRP that will streamline the patenting process during the National Phase.

PCT applications do not directly issue as patents, "international" or otherwise. Instead, at 30 months from the earliest filing date, applicants must decide whether or not to enter the National Phase by filing separate applications, based on the PCT application, in individual foreign countries. If the IPRP is favorable, applicants can proceed with confidence, and with the benefit of having had the National-Phase costs deferred. If not, the PCT application can be abandoned, without the applicants having wasted money on likely-unsuccessful foreign applications.