Okay, you’ve decided that you want to get a patent on your invention in the United States of America (US) and are considering trying for a patent elsewhere. How do you go about doing that?
First off, even before you submit an application in the US, be careful. Do NOT put your invention out into the public. Don’t even put it out for sale. Having an invention in the public domain before filing for patent protection makes your invention ineligible for patent protection in most of the world.
If you’re good on that front, here’s what you do.
- The first thing typically is to file a patent application in the US. Once that is submitted, you will open a 12 month window to file in other jurisdictions. The big multinational companies, such as Microsoft, Dow Chemical, Lockheed Martin, and the like, know the other countries they want to have patent protection. They will have their intellectual property ready to be patented in those countries well within this window.
- You may not know that yet, and 12 months will pass by in a flash. This may be especially true if you want to obtain a patent in a country where English isn’t the primary language. You may need to not only modify your application to meet the particular requirements of the foreign office but also get it translated into their language!
- Fortunately, there is a way in most cases to extend that 12 month window out to 30 months. The World Intellectual Property Office (WIPO) allows what is called a Patent Cooperation Treaty (PCT) application which gives you a “foot in the door” to nearly every patent office worldwide.
- This PCT application must be submitted within 12 months of your US patent application’s priority date which is the first date that an application was filed with the US Patent and Trademark Office (USPTO).
- This typically allows you 18 additional months to submit an application directly to another country’s patent office.
Submitting the PCT application within 12 months puts you into the “international phase” of the process. A patent office will perform a preliminary search of the prior art worldwide pertaining to your invention and will provide a preliminary patentability opinion. This will give you a good idea as to how a patent examiner will view your invention’s patentability. You can respond to these initial reports, but the mechanics and particulars of how to respond is beyond the scope of this article.
After the international phase, comes the national phase of the process. There is no such thing as an “international patent,” and you will have to submit an application into each country you’d like to have patent protection. There is now a European patent, so if you’d like to get protection in Germany and Italy, you can submit an application to the European Patent Office (in English!) and you’d be able to get protected throughout the continent. Each international country (Canada, Japan, Australia, etc.) has its own rules, process and costs. The PCT application can be the small business’s friend, as it gives you 18 extra months to figure out where you expect your invention to be viable and worthy of patent protection.
If you’d like to learn more about patenting, either domestically or internationally, or get help in patenting an invention, please contact me at Bassett IP Strategies.
About the Author
Dave Bassett is President of Bassett IP Strategies. He can be contacted at dbassett@bassett.pro or (585) 739-9726. Dave has been registered with the USPTO since 2004.