International Treaties: Filing for Patents in Multiple Countries

Filing a patent application in multiple countries can be time consuming and difficult. To avoid the hassle of duplicative filings to obtain patents in multiple countries, international treaties have been established over the years.

In a prior blog post, we talked about where to file your patent first, in the U.S. or internationally. Here, we will expand on that discussion to consider the use of two international treaties the United States is a member of, the Paris Convention Treaty and Patent Cooperation Treaty (“PCT”).

The Paris Convention for the Protection of Industrial Property

The Paris Convention was adopted in Paris, France in 1883, and was the first major step taken to help creators ensure that their intellectual works were protected in other countries. It applies to patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, and repression of unfair competition. To date over 175 “Convention Countries” - those that are members have signed on to the Paris Convention.

Paris Convention Member Countries
Source: Wikipedia

Filing and Right of Priority

The Paris Convention is an international treaty that allows you to claim the priority date back to your first filing in your home country. Then you have 12 months to file “Paris Convention applications” elsewhere, in Convention Countries. For each of the Paris Convention applications, you can claim Paris Convention priority back to the initial filing date. This mechanism is helpful to the applicant in buying time. The applicant has the benefit of time to seek additional funding, performing market research, and turning an idea into a commercial product.

Independent Convention Country Patents

Another feature of the Paris Convention to keep in mind is that patents granted in different Convention Countries you file for are independent of each other. Moreover, a patent granted in one Convention Country does not obligate the granting of a patent in any other Convention Country. Similarly, a patent cannot be refused, annulled, or terminated in any Convention Country on the basis that it has been refused, annulled, or terminated in another Convention Country.

National Treatment

In addition, under the Paris Convention, an applicant is afforded “National Treatment.” In other words, foreigners are treated to the same patent laws and protection in a Convention Country as that country’s own nationals receive. There is no separate, discriminatory treatment for foreigners.

The Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) is an international treaty that is administered by the World Intellectual Property Organization (WIPO). The benefit of filing through the PCT is to streamline the process by making it easier and more efficient to file in Member Countries or Contracting States that have ratified the PCT. In the PCT process, the applicant files one single application that is used uniformly for multiple Member Countries, and indicates in the filing the Member Countries it wants patent protection in. The applicant can claim priority back to the date of filing the PCT application or to the date of filing the original application by claiming Paris Convention priority. You then have 30 months (in some countries 31 months) to enter the national phase in each country or region in which you want patent rights. Again, the benefit is buying time, and in this case you have 2.5 years, although filing fees can be expensive.

PCT Member Countries
Source: WIPO

Timing

If you file in the United States and then you also file an international patent application, PCT timelines are tied directly to the initial priority date of the application. For most countries, you would have 30 months from the initial priority date to decide which Member Countries to apply to, rather than the date the international patent application was filed.

What is the PCT Process?

An applicant must file the international patent application at the “Receiving Office” designated for each Member Country or can select the International Bureau (IB) as the “Receiving Office”. For inventions made in the United States, an applicant needs to first obtain a foreign filing license to file the international patent application in a Member country, although a foreign filing license is not needed to file in the US. As discussed, if you file a patent application with the USPTO, a foreign filing license is usually granted concurrently. There are two phases to the PCT process: (1) the “international” phase, and (2) the “national” phase. In the first phase, the applicant files the international patent application. In the second phase, the application is evaluated under the specific patent laws of the particular Member Countries.

Which Treaty Should I Choose to Patent Internationally?

The answer depends on your specific needs and resources. In general, the PCT process can be very expensive up front. If someone wants to patent in just a few countries and has a small budget to do so, they might prefer to choose the Paris Convention. However, if someone wants to file in many countries, it could be easier to file using the PCT because one international patent application can open access to patent protection in 153 Member Countries. Just be aware that the PCT process will incur a higher, up front expense.

Speaking with an attorney experienced in international patent filing will help you decide what the best method of creating and protecting an international patent portfolio would be. Seek professional guidance on the ins and outs of these treaties before embarking on international patent filing.