Can I File for a Patent in Multiple Countries at Once? - An Expert's Guide

The Patent Cooperation Treaty (PCT) is an international agreement that enables inventors to apply for patent protection in up to 150 countries with a single application. This process is much simpler and more cost-effective than filing individual applications in each country. With the PCT, you can submit an online patent application via the EFS-Web Single interface, check the status of your application with the Patent Center and Private PAIR, pay maintenance fees, and resolve patent-related disputes with the Patent Trial and Appeal Board (PTAB). You can also use the Madrid Protocol to apply for trademark registration in up to 84 countries.

Apart from the PCT and Madrid Protocol, there are other ways to protect your intellectual property abroad. The USPTO provides intellectual property toolkits that provide comprehensive information on the protection and enforcement of intellectual property rights in certain markets. These toolkits also include contact information for local intellectual property offices abroad and in the US. The most popular way to apply for patent protection in multiple countries is to file a PCT application.

This type of application is filed under the Patent Cooperation Treaty, which is a treaty between more than 150 countries that allows the applicant to enter the examination phase in a foreign country based on an application filed in another country, preserving the applicant's priority filing date. An international patent application comes into force in all PCT contracting States, so you won't have to incur the costs of preparing and filing separate applications in national and regional offices. International PCT applications are published online in PATENTSCOPE, a powerful searchable database with multilingual interfaces and translation tools. At the end of the procedure, an international preliminary report on patentability will be issued (Chapter II of the IPRP).

In some offices, domestic filing rates are lower for international patent applications than for direct domestic applications, recognizing the work already done during the international phase. Receiving offices are required to accept applications in at least one language, which is both a language accepted by the ISA competent to carry out the international search and a “publication language” (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish). The effect of claiming priority of a previous patent application is that a patent will not be invalidated by any act performed during the interval such as another filing, publication or sale of the invention. If your invention does not seem patentable at the end of the international phase, you can abandon the PCT application and save costs that would have been incurred by applying for protection directly in foreign countries.

Once you have entered the national phase, national or regional patent offices will begin to determine if they will grant you a patent. If you are a national or resident of a country that is a party to ARIPO Harare Protocol, OAPI Bangui Agreement, Eurasian Patent Convention or European Patent Convention, you can also file your international patent application with the appropriate regional patent office if allowed by applicable national legislation. Patents extend only to the entire territory of the United States and have no effect in a foreign country. An inventor who wishes to obtain patent protection in other countries must apply for a patent in each of those countries or at regional patent offices.

PCT fee reductions are available to all applicants who submit their application electronically depending on type of submission and format of application submitted. The international PCT search is a high-quality search for relevant patent documents and other technical literature in Chinese, English, German and Japanese (and sometimes French, Korean, Russian or Spanish). The high quality of this search is guaranteed by standards prescribed by PCT for documentation consulted as well as qualified personnel and uniform search methods used by National Intellectual Property Offices (NIAs). You should also remember that once patents are granted whether or not through PCT you will have to pay maintenance fees in each country to keep them alive.

Mitchell Michniak
Mitchell Michniak

Hipster-friendly coffeeaholic. Total coffee junkie. Subtly charming pop culture specialist. Internet scholar. Certified tv aficionado.

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