International patent applications for U.S. based inventions can be filed within one year (12 months) of filing a U.S. utility patent application (provisional or non-provisional filing). The important thing to note, however, is that the one year clock starts from the earliest filing from which priority is claimed. Therefore, the one year clock starts from the date of filing the provisional application, if filed. If no provisional application is filed, then the one year clock starts from the non-provisional filing.US based applicants cannot directly file an international patent application. You must file a US application first and be granted a foreign filing license (which is automatically granted, unless the USPTO determines not to issue one — which is extremely rare).
Assuming a foreign filing license is granted by the USPTO, filing an international patent application can be achieved in two ways – direct filing or PCT filing.
- PCT filing: An international patent application can be filed under the Patent Cooperation Treaty (PCT). The PCT is a treaty between member states (countries) which recognizes the priority of an applicant’s US based filing. A PCT international patent application allows one to file a patent application with an International Bureau (IB) located in Geneva, Switzerland. Within 30 months of the priority document date (first US filing date), applicant then files national stage application at a member state’s patent office (e.g., China, Japan, Europe, etc.). The advantage of the PCT international patent application is that the applicant, initially, only needs to file one application, instead of filing at each member state. The PCT international patent application also “buys” the applicant extra time to pursue the patent invention at other countries (approximately 30-12 = 18 months) which would not be available if the international patent application is directly filed a member state without the PCT, as further discussed below.
- Direct filing: Applicants have the choice to file directly at each member state under the Paris Convention. Under the Paris convention an international patent application can be filed at each country directly within 12 months of the priority document (first US filing). The advantage of direct filing is that no extra PCT fees needs to be paid. However, all direct international patent application filings need to be filed within 12 months of the US filing priority document.
international patent application: PCT or Direct filing?
PCT filing fees are significantly higher than direct filing in each member country (which needs to be paid anyway when entering national stage). So if the applicant wants to file the international patent application only in one or two countries, direct filing may be economical. However, if the applicant wishes to file in more than two countries, then a single PCT filing with the IB remains a convenient option, as it avoids the need to hire a local patent attorney at each country to perform the direct filing. Another advantage of the PCT application is the extra time allowed (18 months) to pursue the national stage. Since most international patent applications are filed before knowing the economical successful of an invention, the extra time helps the applicant in determining the commercial viability of the invention before pursuing patent applications at each foreign country.
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