for Free Information: ----
Overview | Regular Patents | Provisional Patents | Patent Kit | Designs | International | Companies | Foreign Entities | Patentability Opinions
PCT international patent application
Filing your patent application with the U.S. Patent and Trademark office (USPTO) is the first step toward securing protection of your idea. Upon the granting of a patent by the USPTO you have exclusive rights to your invention in the USA. However, that only protects you in the USA, and not internationally. Generally, a patent is required in each country you seek patent protection in. The problem for all but the deepest pocket inventors/companies is that foreign filing of your patent application can be a very expensive and complex process, as each foreign country has its own patent laws, rules, and regulations, as well as significant fees for filing patents. Thus, careful consideration is required. However, ignoring the world market in a global economy can be a significant lost opportunity for your invention and could significantly diminish the value of your invention and its broader intellectual property value. You have 1 year after any patent filing to file internationally. If you pass the the 1 year international patent application filing deadline you will forever lose all international patent rights on your invention. Hence, making the right decision, after considering various business factors, that hedges your risk and keeps open your opportunity for rewards may be the optimal approach.
Many other practical questions similar to the above should be considered. If your answer is yes to any one such factor, then it is prudent to secure the right to file foreign patents all around the world, even if you later choose not to do so. This is what the PCT patent application enables you to do: defer the decision at a relatively low cost, especially when compared to the extremely high cost of filing in each foreign country. The PCT gives you time to decide which foreign markets turn out to be the most valuable and worthwhile to apply for patent protection in.
For US inventors/companies, because of the great expense of foreign patent filings, the usual procedure regarding international protection is to "buy time" by first filing a US patent application, then within 1 year of filing the US (utility or provisional) patent application or before any public disclosure, file a Patent Cooperation Treaty (PCT) international patent application request. Then within 20 months decide which countries you wish to separately file in. Typically, we would file your US and PCT applications, and foreign associates would file patent applications in their respective countries up to 30 months from the earliest filing date. The PCT application based on your US application would be a low flat-fee for us to prepare and file your PCT request; which locks in your international filing date and gets the PCT process started.
Once you have filed your USA patent application, you
can "reserve" your rights to file in foreign countries by
filing a PCT Application. In this approach, you pick the countries
in which you believe the invention requires patent protection. That
is, as long as you take the proper steps to preserve your international
filing rights (e.g., no disclosure to non-inventors prior to US filing,
file within 1 year of US filing, etc.), you have a good amount of
time to analyze you business case for each country to determine which
are worthwhile to pursue.
If you can afford it and know which foreign countries are worth the investment, then you may file individually in each foreign country and skip filing the PCT; however, this non-PCT approach could easily cost $50K and above. So you should choose each country based on a very solid business case considering the opportunity verses cost in each country. Prosecuting the PCT application costs a few thousand with our firm (spread over a couple of years), but this is very small compared to the very large cost of filing a patent in each country you wish to file nationally with. Filing and prosecuting foreign patents usually costs over $10K per country, where some, like Japan, are more than $50K each.
Whether you seek to file a patent immediately in one
country, or want to reserve countries in a PCT filing, Bay Area IP
can assist you. Generally, we can file your PCT application request
on as little as a one week notice if you have a PCT filing deadline.
However, we do prefer a 2-4 week lead time.
To file a Patent Cooperation Treaty (PCT) International Patent Application based on a US patent application we require:
Our lead-time in filing PCT applications is generally short if the PCT is based on prior patents or applications. Under normal conditions, we can prepare and file your PCT application within a week or two, and as fast as a day or two on a rush status to meet filing deadlines.
Go to our PCT fees section and select the PCT application item (item #FP01). We will contact you with instructions on how to submit the above enumerated information. Feel free to contact us for more information.