For individual inventors and companies of all sizes, the decision to seek patent protection outside the United States can involve some difficult choices. Knowing one's options and some cost-effective strategies can allow inventors and companies to protect and monetize their inventions worldwide.
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Filing Options
The following patent filing options are usually available: 1) U.S.-only protection; 2) file a Patent Cooperation Treaty (PCT) international application; 3) file one or more regional applications; and 4) file national applications in selected countries. Options 2) through 4) can be done individually or in combination.
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Using the PCT
The second option listed above involves the filing of an international application under the Patent Cooperation Treaty (PCT). The PCT established a framework for cooperation in the filing, searching, and examination of patent applications. What should be emphasized, however, it that the PCT does not by itself provide any patent rights. Filing an application under the PCT provides applicants with an understanding of the potential patentability of the disclosed invention through a search report and written opinion, but does not result in an international patent. After approximately 20 or 30 months from the priority date of the patent application, depending on the country, a separate application must be filed in each of the countries in which patent protection is sought.
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PCT Pros and Cons
Over 140 nations are members or “contracting states” of the PCT and, therefore, the PCT application can serve as a mechanism for extending the deadline for filing national applications in many countries and deferring the associated cost. This extension of the national filing deadline provides time for product development, marketing, establishing sources of funding or identifying a licensee.
Additionally, the search and examination that is conducted on the PCT application can provide the applicant with an opportunity to amend the patent claims in the application to place the application in better condition for entry into national phase patent examination.
There can be some disadvantages when filing a PCT application. There will likely be more time involved in obtaining national patents from an international application. Such a delay gives competitors the ability to market and sell competing products during that time period.
4
PCT Cost Reduction
One way to reduce the costs associated with filing a PCT application is through the applicant’s selection of the International Searching Authority (ISA). On November 1, 2008, the Australian Patent Office (IP Australia) became the fourth agency designated as a competent International Searching Authority (ISA) and International Preliminary Examination Authority (IPEA) under the PCT for applications filed in the U.S. With this addition, U.S. applicants can select the U.S. Patent & Trademark Office (USPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO) or IP Australia as the ISA or IPEA. Currently, the search fees for these agencies differ significantly. For example, the U.S. and EPO fees are $2080 and $2164, respectively, while the fees charged by IP Australia and KIPO are $1091 and $609, respectively. Thus, an applicant can save roughly $1555 dollars simply by selecting KIPO as the ISA, in lieu of the EPO (cost is just one factor to consider).
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Direct Filing of Regional Patent Applications
The third option listed above involves the direct filing of regional patent applications. Regional patent organizations, such as the European Union, consist of groups of countries (i.e., “members states”) that have agreed to apply a unified set of patent laws. As a result, a regional patent application will mature into an issued patent, which then only needs to be validated in the desired members states (countries) to obtain full national patent protection in the selected countries. The cost associated with validating the European application can be reduced by selecting a European associate that has offices in the desired member states.
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