International Patents Explained

International Patents Explained

January 19, 2022
Walker Weitzel
Patent Attorney

10 Keys to Understanding International Patents

PCT System Explained by a Patent Attorney

There is a lot to understand about international patent law and the world patent system if you are interested in international intellectual property and patent protection. The World Intellectual Property Organization (WIPO) runs the international patent system and is designed to simplify and harmonize the world’s patent laws. WIPO puts out a lot of content to explain the system of the various intellectual property treaties, what they’re suitable for, how they work, and so forth. However, most people don’t need to understand the various ins and outs of the PCT system. You need to understand the relevant parts so that you and your patent lawyer can choose the path that’s right for you. It’s not too tough if you break it down.

1. If you want patent protection in a particular country, you need to have a patent in that country.

Before the international patent and intellectual property treaties existed, patent applicants and patent lawyers would have to prepare and file a separate patent application using a different patent attorney in each country. To make matters worse, you would have to apply for a patent to each country very early. In many cases, you would have to file all international patent applications before ever publicly disclosing your invention. This causes a requirement for huge upfront investment in the patent at a time in the development cycle when it might not be clear whether applying for a patent internationally is of value. The international patent system is designed to overcome this barrier and allow inventors some leeway in how much time they have to pursue intellectual property protection in various countries. Also, it allows a patent applicant to work primarily through just their own local patent attorney, without having to find international patent law firms to handle individual patent applications in each country.

2. There is an international patent system run by the World Intellectual Property Organization (WIPO).

The international patent system is run by WIPO, a nongovernmental agency that serves to harmonize the various countries’ intellectual property and patent law. Each individual country has its own patent office that handles patents and trademarks. The international patent system works with all of the patent and trademark offices to coordinate worldwide patent law and patent application processes. ” alt=”Intellectual Property Law for International Patents” />

Two treaties, the Patent Cooperation Treaty (PCT) and the Hague Agreement, both let people file international patent applications. The PCT system helps you file your utility application in multiple countries. The Hague Agreement helps you file a design patent or industrial design in multiple countries. This article focuses on utility/PCT applications.

3. The PCT system is designed to simplify the process by using one patent application in multiple countries.

Instead of having to file many applications all at once, your patent attorney will file one application with WIPO. This is known as the “International Phase” patent application. It is very similar to a provisional patent application in that you establish that you invented your invention, and you will decide on exactly how or where to protect the invention at a later date. It is different from a provisional patent application. However, it is a full, complete non-provisional patent application that will be examined by the patent and trademark office of the countries you choose.

4. The system gives you extra time to choose which countries you want to file in.

Once your patent attorney files your application, you have 30 months to decide which countries WIPO is sending your application to. You will still be filing a separate patent application in each country that requires protection, but WIPO handles disseminating the application to each of the countries you choose. This is a big deal because, under every other patent law, applicants have at most 12 months to make sure they have filed for a patent in every country that they want a patent in.

5. It pays to be selective where you file — every patent application incurs its own Patent Office fees.

They can multiply out quickly and vary significantly between patent offices. Electing a few key countries will often create a wide moat of intellectual property protection. Many patent applicants will choose their most profitable markets, such as the EU, Mexico, Canada, and the US. The system has shortcuts designed to eliminate redundant efforts.

Every patent applicant has to work with the patent office to get the patent through, known as “patent prosecution.” Sometimes prosecution takes a small amount of effort. Sometimes it takes a lot. All things being equal, you want to minimize how much patent prosecution you have to do because it is a difficult job that a registered patent attorney must do, so it tends to be a particular type of work that can become quite expensive.

WIPO has instituted two ways to get around having to argue with more than one patent office examiner. You can handle much of the prosecution directly through WIPO before you elect any specific countries, which saves your patent lawyer from having to find local patent lawyers for each of your international applications. You iron out all of the details with a WIPO examiner. Once everyone is happy, you send it around to all the countries, but with WIPO approval. Note, WIPO is just made up of a few different patent offices, so the WIPO examiner is just the examiner of whichever country you choose for your international application.

In other words, for many or most applicants, a PCT application proceeds exactly the same as a normal patent application. If you instead choose to start prosecuting your patent in one or more countries, you can take those findings to other patent offices as soon as one country approves your application. The other patent offices will generally accept the findings, essentially allowing the patent to be granted everywhere. This specific process is known as the “Patent Prosecution Highway.” It allows a patent applicant to eliminate redundant prosecution.

In addition to Patent Office official fees, each individual international application requires some involvement from a local patent lawyer or patent agent. Patent agents tend to be less expensive than patent lawyers or patent law firms. By moving most of the prosecution process back to the original lawyer who filed the PCT application, we can generally rely on less-expensive patent agents to look after the patent application as it proceeds through the examination process.

6. It is not cheap.

As discussed earlier, there’s an opportunity for costs to multiply out as you choose which countries to file in. It’s actually not that much more expensive than a normal patent application, and every additional patent application will cost significantly less than it would without the PCT.

Therefore, the PCT process is actually a good value in the patent world. Without a doubt, the total cost to get a patent in multiple countries is high. However, the marginal cost of electing additional countries is much lower than if you chose to apply directly in each country.

7. What do you get?

A patent on an invention grants you the rights to prevent others from making, using, selling, offering for sale, or importing the invention. Patents are part of the legal system of each country. Therefore, if you want to enforce your intellectual property rights within a given country, you need a patent and patent lawyer in that country. If you want protection in multiple countries, you will need a patent in each of those countries.

Patent protection is very strong once it is in place. In certain countries, patent law is one of the few legal practice areas that allows the award of treble damages for intentional patent infringement. Treble damages allow a claimant to recover up to three times the profit an infringer made through infringement. Because of this stipulation, most established companies will be extremely wary of intentionally or unintentionally infringing a patent.

In practice and under the law, this means you have a right to a monopoly on the technology for the life of the patent. In most countries, utility patents are valid for up to 20 years.

8. When to file an international application.

Patent laws strongly encourage applicants to file as soon as possible. On top of that, once you file your first patent application in a country, you have at most one year to file in any other countries you are considering unless you use the PCT system.

The PCT system has several features that allow you to delay applying, allowing the spreading of expense over time if necessary. Therefore, I recommend filing as early as possible unless there is a financial need to delay.

9. What does the process look like in practice?

You prepare a nonprovisional patent application. A PCT application looks exactly like a normal nonprovisional utility patent application.

  1. You file the application with a patent office, such as the United States Patent and Trademark Office (USPTO). You will probably file the application with USPTO as the “receiving office.” There is a lot to discuss which receiving office you should choose, but the USPTO or EU receiving offices are the best choices in most cases. The factors to consider in choosing a receiving office are case-specific and beyond the scope of this article.
  2. The patent examiner will do a search and provide a search report. They will also provide a preliminary opinion on whether the invention is patentable.
  3. Within 30 months, you “elect” all countries you want patent protection in. The patent office will send your application to all countries you choose.
  4. You prosecute the application in one or more of your elected countries, working with a patent examiner to get your application into a “condition for allowance.”
  5. You use the Patent Prosecution Highway to take the Allowed patent from one country as evidence to have it Allowed in all other countries.
  6. The patents will be issued in the countries you have chosen.
  7. You must pay to maintain active patents with either maintenance or annuity fees, and the patents will remain in force as long as you continue to pay these. The fees vary in structure and amount. The US Patent and Trademark Office requires fees every 3.5 years. The EU Patent and Trademark Office requires annual fees. Generally, maintenance fees increase every time they become due.

10. Another critical advantage of a Patent Cooperation Treaty application is that it can be used as a sort of super-powered provisional patent application.

A typical provisional patent application is used to establish that you “invented” the technology, and you were the first person to “possess” the technology, at least as early as your first filing date. The provisional means that nobody can come behind you and patent your idea before you get around to completing the patent process. If you have the first filing date, you are the only one who can patent the idea.

A provisional patent application buys you one year in this process. After you have filed your provisional patent application, you have up to one year to come back and complete your nonprovisional patent application and to begin the application process in earnest.

A Patent Cooperation Treaty patent application can serve a similar purpose. Once you file it, you have established that you are the first inventor or possessor of the invention. However, you have much longer with a Patent Cooperation Treaty patent application. You can file a Patent Cooperation Treaty patent application, and then you are not required to take any action for up to 30 months after the initial filing.

Therefore, it can be used as a tool to protect an invention very early in the development and commercialization cycle. This can give the patent applicant a lot of time to figure out what commercialization will look like and which countries they want to file for a patent in.

A final note on where to file

Many applicants want the maximum protection they are allowed. The PCT system allows applicants to file for a patent in over a hundred different countries simultaneously with relative ease. When my clients ask me where they should file, I generally counsel them to apply only for patent protection in countries where they already have established business operations. Specifically, this is because even if you have a patent in a given country, you have very little power to enforce your rights unless you have someone there to enforce them.

When we are unsure which countries to file in, I often recommend we just file in the US, which tends to return a relatively large value compared to the expense.

The international patent system can be intimidating to learn about. Patent attorneys are here to help.

With the guidance of an experienced patent attorney, you can understand precisely how you can use the process to your benefit. While it seems complicated, it is actually a far simpler system than what existed before the Patent Cooperation Treaty was implemented.

Furthermore, the system is much more cost-effective than earlier systems. Specifically, the Patent Prosecution Highway system allows you to complete prosecution with just one office, then use that to short-circuit prosecution in all of the other countries you have chosen. ” alt=”A good patent attorney can walk you through the whole process” />

For example — in the past, if you wanted protection in the US, Mexico, and Canada, you would file three applications initially, then prosecute all three applications, then hopefully get them all to issue. With the Patent Cooperation Treaty, you will file one application, prosecute it in the US, for example, and get it allowed, then use the allowance to cause Canada and Mexico to allow their two patents.

This example would eliminate prosecution efforts with Canada and Mexico, which would require significant involvement from local Canadian and Mexican patent attorneys or patent agents, thereby saving significant costs for those attorneys.

We hope this overview of the International Patent Application process has been helpful. Of course, this article is meant as an overview, and there are many wrinkles and details that may apply in any given case. An excellent registered patent attorney can describe and explain how this process would work in your particular situation and how it can be used to the greatest advantage in any given case.

To learn more about the process, please feel free to schedule an appointment with one of our talented patent attorneys at our Patent Law Firm to discuss your case and any relevant patent law at no charge. Our patent lawyers are here to provide the help you need to get your invention protected. We specialize in working with small businesses and inventors who may not have much exposure to patent law, and we love to use our skills to help people understand how to best use the patent system to their advantage.

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