By: Anna Kinney [4/1/22]

Many people applying for a patent in the United States only consider filing in other countries as an afterthought. You should consider whether you want to file in foreign countries before filing a nonprovisional application in the US. If you wait too long, you may lose priority to your earliest filing date. If you lose your priority date and you have made the invention public before you have filed internationally, you may no longer be able to get a patent in other countries.

The simplest and cheapest way to foreign file a utility application is through the Patent Cooperation Treaty (PCT). Most countries are parties to the PCT, which boasts a membership of 154 Contracting States. Many countries can be entered via the PCT through an intermediate region, including the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI), covering many countries in sub-Saharan Africa; Eurasia covering several former Soviet Union countries; Europe covering European countries. “Brexit” has not changed the United Kingdom’s participation.

Once your patent practitioner has prepared a nonprovisional patent application, a single PCT Request may be filed in a first “International Phase”, under which a searching authority will search prior art and issue a preliminary opinion on the patentability of your invention. The opinion is published with the application about 18 months after your initial filing date.

A “National Stage” follows the International Phase. Within 30 months after the first filing date of your application, you must file the application in the countries or regions you want to enter. That can include filing your application in the United States. Filing the application in foreign countries must be done by one of our local associates. For example, if you want to file your application in Europe, a European Patent Attorney will file the application on your behalf. It is generally cost-prohibitive to file the application in all of the PCT Contracting States, so you must determine where you may want to do business. In other words, where do you want to exclude competitors from making, using, or selling your invention?

If you have received a favorable opinion from the searching authority, the National Stage will be simpler and cheaper. If you initially receive an unfavorable opinion, you may be able to submit an amendment to the claims to resolve the issues brought up in the opinion. However, in order to have the application reconsidered, you must file a “Demand.” It may be advisable to file a Demand to minimize the professional fees incurred by addressing the same matters in each National Stage country. Even so, additional prosecution time in the various countries may be unavoidable.

There are additional costs to consider in determining your filing strategy. Your application may have to be translated into other languages. Many countries have annual annuity fees even before your application has been allowed. Once your application has been allowed, additional government fees must be paid. And after you have received your patent, you generally must pay annuity fees to keep your patent in force.

Do you have questions? Dunlap Bennett & Ludwig can help you file a patent application both in the US and internationally. Please contact our Patents Department at patents@dbllawyers.com or 855-818-3663 for more information.


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Posted in: Intellectual Property, Intellectual Property - Patents

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