As a sequel to this article on international patent systems, the following article covers international patent filing strategies. A patent application can be filed internationally under Paris convention or Patent Cooperation Treaty (PCT) mechanisms. Let’s first look at how these 2 International patent filing mechanisms work and then understand how to use them.
Paris convention is an international treaty signed by 179 countries and allows one member country to claim priority date of the patent application filed previously in another member country. In other words, if you file a patent application in Jurisdiction 1 (say USA) with a certain priority date, you can file a family application in another member country(say India) claiming priority from the first member country (USA) as long as it is filed within 12 months of the priority date and on the same subject matter.
What if the applicant is unable to file the family application within these 12 months?
It may happen that the applicant either does not have sufficient funds or has not explored the target market sufficiently well to arrive a decision on which countries to file within the 12-month period. This is where PCT comes to the rescue.
Patent Cooperation Treaty (PCT)
PCT is useful when the invention is not expected to be fully mature within 12 months of the priority date or when the applicant desires to delay the patent costs of foreign filings. Another scenario where PCT can be a useful strategy if the applicant desires to file the application in a large number of countries.
The additional period to enter national phase (file in individual countries) under PCT allows the applicant to:
1) Delay costs of multiple filings without losing the priority right (PCT costs are of course incurred within 12 months from priority but national phase costs are delayed, which would otherwise be immediately incurred under Paris convention).
2) Make additional improvements and developments to the claimed invention before entering national phase (e.g. based on an International search report issued after PCT filing).
3) Formulate a more mature IP strategy with respect to which specific countries to file the patent application in.
There are 2 scenarios possible in PCT filing:
Scenario 1: PCT is filed with priority from another member country
In this system, the applicants can file a PCT application anytime within 12 months from the priority date. The applicant then needs to enter the national phase within 30 months from the priority date (31 months in some countries).
Scenario 2: PCT is filed as the priority application
Scenario 2: PCT is filed as a priority application
Sometimes the applicant may not file the priority application in a member country but may file the priority application with WIPO as a PCT application.
The advantages of PCT remain the same in this scenario as well.
Which international patent filing route should the applicant choose ?
The answer to this question depends on multiple factors – business strategy, patent filing budget, target markets and so on. However, there are some basic elements that can help the applicant make a decision.
If the invention is sufficiently developed and the patent strategy is well defined and clear in terms of which countries to enter within 12 months from the priority date, Paris Convention may be a suitable strategy to follow. If, however, the applicant needs additional time for foreign filing, beyond the available 12 months from priority date, a PCT application may be more suited because the PCT filing would delay costs of national phase filings.
In essence, the decision between Paris Convention and PCT filing is a trade-off between additional costs of PCT filing v/s additional time that may be required to make a decision on foreign filing. The applicant does spend additional costs of filing a PCT application but they also get more time to gather additional funds, develop or refine the claimed invention and formulate a better patent strategy (e.g. deciding to enter additional markets or deciding to not file the patent application in some countries as per business interests).
Although this article provides a basic overview of how to select between the two International filing mechanisms, It is always advisable to get in touch with a Patent Attorney for best suggestions depending on the details of the patent application.
Leave your thoughts below if there are any best practices you have experienced or follow for International filings.