Foreign Patent Rights
Filing a Patent Cooperation Treaty (PCT) application is the most common method of filing internationally. Certainly, we can help you file in specific countries, but would need to reach out to co-counsel in said countries. These applications do not change in substance or content so much, but the examiner doing the searching and examination is what is called an International Search Authority (ISA) and that search and examination will be relied upon by the various countries that have signed up to the PCT (90+ countries).
How Does Bold Patents Handle PCT Applications?
We work with you and your business to help you understand the value that having international rights can be. From having already worked on your underlying U.S. Patent Application, we will be best suited to represent you before the world. Specifically, we also will help you interpret and forecast the costs involved in fully filing and enforcing your rights overseas so you can make the best decision possible. Set up a free consultation today to learn more about claiming your rights on your invention overseas!
Filing an International Patent
Once you understand the PCT Application Process, you can apply for patent protection in multiple countries. In fact, you can file for a patent in as many as 155 countries using just one application!
Ultimately, the national patent office — or the European Patent Office for EU countries — examines and decides whether to grant the patent. The process includes several steps:
- Application Submission: Submit your international patent application, paying just one fee, to the U.S. Patent and Trademark Office (USPTO), the World Intellectual Property Organization (WIPO) or a national patent office (also referred to as a ‘Receiving’ office). In most cases, PCT patent applications are completed and submitted electronically. When your application is submitted, you should have provisional patent protection in all countries that are part of the Patent Cooperation Treaty (PCT).
- International Search: An International Searching Authority (ISA) conducts a patent search to examine published patents and prior art which could impact the patentability of your invention. The ISA then provides a written opinion.
- Publication: Eighteen months after the earliest filing date, your application for international patent protection and its contents are published internationally.
- Optional Supplementary Search and Examination: At your request, another ISA may seek to identify published documents that weren’t identified by the first ISA’s search. You may also request a preliminary examination to analyze the patentability of your creation based on changes you made after the ISA’s written opinion.
- National Phase: The conclusion of the ‘National Phase’ is when you obtain patent protection in each country, assuming your application is accepted. While you can submit one application for patents in multiple countries, it is still up to each country to review and decide to issue the patent. In other words, the PCT application streamlines your request but does not guarantee patent approval anywhere.When your application reaches the national phase, it will be reviewed against applicable patent laws in effect at that time. Because each country examines your application based on its laws, the time frame for conclusion of the national phase varies.
It is worth noting that you have up to 30 months from the date you filed the initial patent application — or up to 18 months after filing a PCT application — to decide in which countries you would like to enter the national phase for patent protection. This gives you time to explore your options.
Bold Patents serves clients nationwide. Contact us today for a free consultation and to learn more about your options for international patent protection!