You can file an international patent application, in most cases, with your country's Patent Office or directly with WIPO if allowed by your State's national. Identification, guarantee and defense of intellectual property rights In general, you cannot obtain a single patent that is effective in all countries of the world. Generally, patent protection must be guaranteed in each country or foreign jurisdiction through a local patent in that country or jurisdiction. However, there are regional patents that cover several countries.
An example of a regional patent is a European patent, in which European member countries of the European Patent Office (EPO) recognize EPO patents. In addition to regional patents, there is an international patent application called a PCT patent application that provides a process for reserving the right to file patent applications in foreign countries and participating regions, such as the EPO. PCT: For member countries of the Paris Convention, foreign patent applications must generally be filed within 12 months of the first domestic application filed in a member country. Therefore, if the applicant first filed a patent application in the United States, they would have 12 months starting in the U.S.
UU. Filing foreign applications in Paris Convention member countries that claim priority and benefit from the U.S. filing date. The PCT (Patent Cooperation Treaty) application process generally gives the applicant an additional 18 months to consider whether they want to apply for patent protection and in which countries.
If the applicant first filed a patent application in the United States and then filed a PCT application within 12 months from the date in the United States,. When submitting the application, the applicant will generally have an additional 18 months to nationalize the PCT application in foreign countries where he wishes to obtain patent protection. However, some PCT member countries do not provide for a full 18 months for nationalization, but instead require nationalization much earlier. It's important to consult early in the process with an attorney regarding the time frames that would apply to your case.
PCT member countries More than 140 countries are PCT member countries. Therefore, when filing a PCT application, you can reserve the option of applying for patents in more than 140 countries. Not all countries are members of the PCT. The PCT application process consists of two stages, the international phase and the national phase.
Residents or nationals of any PCT member country have the right to submit a PCT application. International phase: A PCT patent application must be filed within 12 months of the first filing of a domestic patent application (for example, a U.S. patent application). An example of an application process flow is provided in Figure 1 below.
The example in figure 1 shows that at point A, a, U, S. Then, 12 months later, at point B, a PCT application was submitted, giving priority to the U.S. It is also possible to submit the PCT application before any national application. The PCT application can be submitted through a receiving office in PCT member countries, such as the U.S.
Patent and Trademark Office or through the WIPO International Office. The PCT applicant can request a second international search or a complementary international search, which can be carried out by one or more of the ISAs (other than the one that conducted the main international search), which will result in a complementary international search report. The PCT applicant has the opportunity to modify the claims of the patent application in response to the search report. Optionally, the PCT applicant may request a Chapter II examination (international preliminary examination leading to an international preliminary report on patentability).
National phase The PCT application must be “nationalized” (enter the domestic phase) in foreign countries or jurisdictions where you want to obtain patent protection. Once the application is nationalized in a particular country, the application will be examined in accordance with that country's local laws to determine if a patent should be granted. Therefore, if you wanted to obtain foreign patent protection in China, Australia and Europe, you would have to nationalize the PCT application in each of those jurisdictions before the nationalization deadline (see below) to apply for patent protection in that country. The deadline for nationalizing the PCT application depends on the country.
Most countries or jurisdictions require that the application be nationalized within 30 months of the earliest filing date (the first filing date of the claimed priority application); other countries or jurisdictions require nationalization within 31 months. However, as explained above, some PCT member countries do not provide for a full 18 months for nationalization, but instead require nationalization at a much faster time. The first priority date claimed in the example in Figure 1 is the date the United States application was filed, not the date the PCT application was filed. At point C in figure 1, nationalization occurs in countries 1 and 2 within 30 months.
In point D in figure 1, nationalization occurs in countries 3 and 4 within 31 months. Nationalization can take place in a regional patent organization, such as the European Patent Office, rather than in a country. Individual countries or regional patent organizations offer a grace or reactivation period that allows for nationalization even after the deadline. Therefore, if you have missed the nationalization deadline, you should ask an attorney if there are still options to nationalize your application in the countries you choose.
Nationalization generally involves the payment of a nationalization fee, the submission of certain documents and, in some cases, the submission of a translation of the application. The nationalized application will then be considered in accordance with the local laws of the jurisdiction to determine if a patent should be granted. Local attorney representation is likely to be needed in nationalized jurisdictions to process the request under their local laws. The lawyer can work with foreign lawyers during the local processing of the application at the domestic stage.
Cost Obtaining patent protection by nationalizing a PCT application in all PCT countries is usually not economically feasible. The need to hire local lawyers and process applications in each of the 140 countries would be a very expensive task. Instead, clients often choose, at the time of the nationalization deadline or before, to nationalize the PCT application in countries where they have sales (actual or expected) or commercial or licensing opportunities sufficient to justify foreign patent expenses. Conclusion Seeking foreign patent protection involves considerable costs.
However, foreign patents can be valuable when undertaken with a specific approach that is aligned with the appropriate business case. Erickson Law Group, PC represents clients from across the country and the Chicago metropolitan area, such as Wheaton, Aurora, Naperville, Joliet, Carol Stream, Oak Brook, Schaumburg and St. The firm serves counties including DuPage County, Kane County, Cook County, McHenry County, Will County, and Lake County. In addition to filing a PCT application, you can file it directly with the patent office of any country.
You can also file an application with the European Patent Organization (EPO). This gives you access to patent protection in nearly 40 European member states. A non-provisional U.S. application must be filed in the U.S.
UU. or in any foreign country within 12 months of your provisional filing date to benefit from the priority date set out in the provisional application. The provisional patent application provides the patent applicant with 12 months to decide in which countries a patent application should be filed (EE). or other jurisdictions).
However, within that same 12-month period, the patent applicant may choose to convert the United States provisional patent application into an international patent application based on the patent cooperation treaty (PCT). The filing of a PCT application basically takes that 12-month US deadline and turns it into a 30-month extension for the 148 member states of the PCT, that is,. If your company plans to take its operations and sales abroad, or if it plans to be acquired by a larger entity, having a PCT application ready to submit in each country to which you plan to expand can be an invaluable tool for protecting your intellectual property. This is especially true for software-as-a-service (SaaS) and information technology (IT) companies, as the product being offered can more easily infringe compared to a physical product, especially overseas.
If you're interested in getting more details related to your situation, it's best to talk to an attorney. Request a free consultation here This week, AT&T received a patent to address antenna network challenges using an iterative simulation system to determine the most efficient and effective locations for placing antennas. This week, Disney received a patent to animate a digital 3D puppet based on a user's audio capture and motion data. The strictly necessary cookie must be enabled at all times so that we can save your cookie configuration preferences.
The IPRP (Chapter II), which is provided to you, to WIPO and to national (or regional) patent offices, consists of an opinion on compliance with international patentability criteria for each of the claims that have been sought. Once you have entered the national phase, interested national or regional patent offices begin the process of determining whether they will grant you a patent. International patent applications, called PCT applications, are part of the process for patenting an idea and are the first step in obtaining exclusive rights to your inventions in countries around the world. The effect of claiming the priority of a previous patent application is that a patent will not be invalidated by any act performed in the interim, such as the filing of another application, the publication or the sale of the invention.
The international search report consists primarily of a list of references to published patent documents and technical journal articles that could affect the patentability of the invention described in the international application. The granting of patents remains under the control of national or regional patent offices in what is called the “national phase”. Usually, the applicant begins by filing a patent application with the local national patent office, for example, the United Kingdom Intellectual Property Office. An international PCT search is a high-quality search for relevant patent documents and other technical literature in the languages in which most patent applications are filed (Chinese, English, German and Japanese and, in some cases, French, Korean, Russian and Spanish).
International Phase A, the PCT patent application must be filed within 12 months of the first filing of a domestic patent application (for example, a U. They may include the fees for the translation of your application, the filing fees of the national (or regional) Office and the fees for hiring the services of local patent agents or attorneys. You can file an international patent application, in most cases, with your country's Patent Office or directly with WIPO, if allowed by your State's national security provisions. This additional time can be useful for evaluating the possibilities of obtaining patents and exploiting your invention commercially in countries where you plan to obtain patent protection, and to evaluate both the technical value of your invention and the continuing need for protection in those countries.
The complementary international search report is generally similar in content and appearance to the main international search report; it contains a list of references to patent documents and other technical literature that may affect the patentability of the invention claimed in the international application. However, it is possible to file an international patent application (also called a PCT application) that, for a certain period of time, replaces the numerous individual foreign patent applications that would otherwise be necessary to obtain protection abroad. .
