Global patent protection – foreign filing timeline

Written by Roy Rosser, Ph.D. Patent Agent
visit our website at www.GearhartLaw.com  

           Do you need international patent protection, and when do you have to decide?  This post describes the method used to file in foreign countries with a timeline for filings.  In a nutshell, you have one year from filing a US provisional or *non-provisional (utility) application  to decide if you want to do foreign filings, and 6 months for design patents. *(Assuming no provisional application was filed for this case).  The filing is done under the Patent Cooperation Treaty, or PCT.            
           The PCT is an international Intellectual Property rights treaty administered by the United Nations through its World Intellectual Property Office (WIPO).    Neither WIPO nor the PCT issue patents, but they do provide a relatively inexpensive way to keep your options open in the nearly 150 countries that are member states by filing a single patent application, in English.    The PCT application must be filed within 12 months of any application it claims priority from. This is usually a US provisional application.   The PCT application is pending in all of the nearly 150 countries up to 30 months from its priority date, after which it must be converted into national stage filing in whichever countries the applicant chooses. The cost of filing the PCT application varies depending on choices, but is typically about $2000.00. The expensive stage is the national stage filings at 30 months, though, if plans have not worked out, you don’t need to file in any country.

SIMPLIFIED PCT TIMELINE

0 months      File US Provisional or Non-provisional Patent Application
12 months    File PCT Application
16 months    Written Opinion of the International Search Authority is issued (WOISA)
                        Expedite US National Application via the Patent Prosecution Highway (PPH) 
                        License to foreign countries
30 months    National Stage Filings

Your patent application is examined for patentabilty and a Statement of Patentability, known as the   Written Opinion of International Search Authority (WOISA) is issued at 16 months from the date of priority. (WIPO, like SMERSH before it, is riddled with acronyms).  

 If your WOISA is favorable – indicating that your invention is novel, has an inventive step and has practical utility – it may be used to fast track other national applications, including a US national application, using the Patent Prosecution High (PPH). The PPH is a system that allows you to get your application to the top of the Examiner’s “to do” pile by relying on the prior art found in the PCT examination – and there is no extra USPTO fee! 

When filing a PCT application, you also have the option to indicate if your invention is available for licensing and under what conditions.   Since many of the nearly 150 PCT states, including Singapore and South Africa, will issue patents based on a favorable WOISA as an alternative to a national search, this provides an opportunity for inventors to defray the cost of patenting by licensing the product into parts of the globe they have no intention of operating in even before the 30 month date. To indicate you are open to licensing your invention, all you need to do is to file a form PCT/IB/382 (see link below) and the information will be displayed and searchable on WIPO’s Patentscope Data Base.

For more detailed information on any or all aspects mentioned above, either contact Gearhart Law at hello@gearhartlaw.com  or visit one of the links below:

Gearhart Law LLC
Innovation Plaza, Suite 1A 41 River Road, Summit, NJ , 07901, USA 5 Penn Plaza, New York, Ny , 10001, USA 3401 Market Street, Philadelphia, PA , 19104, USA
Phone: 908.273.0700,
Phone: 212.896.3933 ,
Phone: 267.225.4066, $$$