Michael J. Foycik Jr., Esq.

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Wondering about filing an international patent application?  There are some myths and misconceptions about international patent applications, including what that phrase even means.  Let's talk about that.

Myth: an international patent application can be filed that, when granted, turns into a patent giving patent rights in all countries.  Fact: there is no such thing.  This is probably the biggest patent myth.

Misconception: a PCT application is like a US patent application, and can turn into an issued patent.  Fact: a PCT application is more like a bookmark in time, holding the date for other, later applications called “national stage” applications.   A short explanation about PCT applications is in the following paragraph. 

Most would think “PCT application” (Patent Cooperation Treaty application) when talking about international patent applications.  Yet it is not a traditional application in the usual sense of that word, and so is a little tricky to understand.  A PCT application is like a US patent application in some ways: it grants “patent pending” status; it confers rights to its filing date as a priority date for filing other patent applications; and, it grants a period of time in which to file other patent applications.  However, it is unlike a US patent application in that it does not directly mature into a patent, and the time period conferred is different.

Misconception: a foreign patent is equivalent to a US patent.  Fact: the protection afforded by a granted patent differs widely among countries.  For example, a US patent confers protection that is considered very broad, and legal rights are as strong as other property rights.  In some countries, a granted patent may have little practical value, or may be costly to enforce, or may only cover what is specifically shown and not variations.  It is important to know the legal rights conferred in a specific country, before filing a patent application there.   

So, how does a PCT application turn into a patent?  This is done by filing a national stage application based on the PCT application.  Here's a simple example: a PCT application designates two countries, China and Germany.  If the applicant decides to obtain patent protection in those two countries, then a national stage application must be separately filed in both countries including national stage fees.  The patent applications will be separately examined in China and in France, and there will almost certainly be legal costs associated with those applications.   If thirty countries had been designated, then thirty separate national stage applications may need to be filed.  It may be possible to save costs in the future: an EU application will reportedly cover all of the EU countries in the near future, with a single filing fee and a single examination process. 

Myth: a PCT application is needed to file in foreign countries.  Fact: it is possible to bypass filing of a PCT application, and file directly in the countries of interest.  These foreign-filed patent applications  too may be understood as internationl patent applications. 

There are other facts worth knowing about international and foreign patent applications.  I plan to cover more about that in future articles. 

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.