Process for Prosecuting Patents Overseas

Posted Tuesday, August 02, 2011.

You’ve decided there is a market for your invention outside the United States. You are already seeking patent protection within the U.S., but you want to expand that protection to other countries. However, there is no such thing as an “international patent.” What inventors who want patent rights in multiple countries need is a patent from each of those countries. What does the process entail? Must you submit an individual application for a patent to the patent office in each country in which you want a patent for your invention?

Thankfully, the process is more streamlined than that. Patent offices from around the world give priority to international applicants under the Patent Cooperation Treaty (PCT), and recognize a type of international patent application called a “PCT application.”

Under the PCT, patent prosecution is divided into phases. First, there is a “PCT Phase,” in which the applicant submits the PCT application to an “International Receiving Office.” In the next phase, called the “national stage,” an application receives consideration by the patent offices designated by the applicant. Patents are then awarded by country at the conclusion of the national stage in each of those countries.

In the PCT phase, the applicant will receive a document called an International Search Report (“ISR”) prepared by a searching authority. The ISR contains results from searches of worldwide patent databases for the invention disclosed by the PCT application. Inventors can use these results to determine the list of countries in which they want to pay for a patent. The applicant then enters the national stage in each of those countries.

In the national stage, the PCT application is submitted to the patent offices of the countries, along with the International Search Report, and the applicant pays national stage fees to the individual patent offices. This is where the process can become really expensive. In addition to filing fees for each country, applicants may also be required to pay for a translation of the application into the local language before it is submitted to that country’s patent office.

With the ISR in hand, however, inventors can make an informed decision about which countries they should spend money to seek a patent. Through the mechanism of the PCT application and resulting ISR, inventors can enter the national stage only in those countries where they feel they have the best chance of success for a patent. In addition, a number of worldwide patent offices issue the patent strictly on the basis of the information contained in the International Search Report, or at least do less searching on their own than they would for an application submitted to them directly without having first been through the PCT phase.

A significant benefit to the PCT mechanism is that it defers the payment of fees to worldwide patent offices for up to 31 months after the filing of the first application disclosing the invention. While it is true that a PCT application costs more to file than a U.S.-only application, for example, that initial cost pales in comparison to the total expense of getting into the national stage in three, four, or more countries. This cost-deferral allows inventors some flexibility with their capital, providing the 2 ½ year opportunity to see whether their invention is a marketplace success before committing the really big money to international patent protection.

One wrinkle in the process described above is courtesy of the European Union, where patents are prosecuted in a harmonized fashion by the European Patent Office (“EPO”), located in Munich, Germany. For inventors who want patent protection in European countries, at the conclusion of the PCT phase, the European phase begins. As with national stage applications, the PCT application and ISR are submitted to the EPO, who handles prosecution for all EU member countries. However, following the EPO’s examination of the application, which results in a European patent, applicants further select EU member countries for “nationalization.”

The European patent by itself does not confer any rights within the various countries of Europe. Once the applicant presents the European patent and a translation, if necessary, to the patent office of an EU member country, along with the appropriate fee, a patent is issued by that EU member country. Despite the last element of filing in the individual EU countries, the harmonized prosecution does actually streamline the patent process in Europe. The prosecution is where the complexity lies, and it is helpful to only have to do that once for the EU countries. Once the European patent issues, nationalization is primarily an exercise in paperwork.

In conclusion, while it is possible to file for patents in multiple countries by individually contacting those countries’ patent offices, the PCT application mechanism provides streamlined international patent prosecution. Another significant benefit is the lengthy deferral of the due date for the bulk of the patent fees. The process as described here may appear challenging, but navigating it is completely within the capability of a competent patent practitioner. You shouldn’t hesitate to inquire about patent protection overseas if you want to have the exclusive right to practice your invention in countries in addition to the U.S.

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