The International Patent Filing Process: Utility Patents

The patent filing process — in the US and foreign countries — is beyond complicated.

An inventor choosing to protect her invention finds herself in a hailstorm of peculiar terms and almost undecipherable timing deadlines.

The aim of the next few posts is to give you the 101 utility patent types, a few important dates, and a little savvy on how to protect your invention abroad. The following posts apply only to Utility patent applications. (Design patent applications will be covered in a separate series.)

The Terms

US Provisional Patent Application (the placeholder)

A provisional patent application is used to establish priority of invention.

Essentially, you establish that you invented first.

When you file a provisional patent application with the US Patent and Trademark Office (“USPTO”), the USPTO issues to you a filing date for your invention disclosure.  A provisional patent application is not examined by the PTO and never matures into a patent.  The provisional patent application is merely a placeholder – a method used by an inventor to demonstrate that she was the first to invent.  To maintain the filing date of the provisional patent application, an applicant is required to file a non-provisional patent application within 12 months.

The filing date of the provisional patent application confers a few benefits:

(1) a USPTO patent examiner can’t cite against your later filed non-provisional patent application any references (such as patents, products on the market, or journal articles) that appeared after the filing date of the provisional application that could prevent you from obtaining a patent;

(2) if someone else invents the same thing after your filing date, that person can not get a patent on the same invention.

For more about provisional patent applications, take a look at our previous posts explaining why you shouldn’t file a quick and dirty provisional patent application that you draft yourself.

US Non-Provisional Patent Application (what may lead to a patent)

A non-provisional patent application is examined by the USPTO.  If the non-provisional patent application claims patentable subject matter, the USPTO will grant the inventor a patent on the invention as claimed in the patent application.  A non-provisional patent application may claim the benefit of the filing date of a provisional patent application filed less than 12 months prior, a non-provisional patent application filed at any time if the prior filed non-provisional patent application still pending, or a foreign patent application if the foreign patent application was filed less than 12 months prior.

Essentially, you want that early date of the provisional patent application to increase your odds that you can obtain a patent before someone else.

PCT Patent Application

The PCT application does not provide for the grant of an “International Patent.”  As of today – there is no such thing as an “International Patent.”  Rather, a PCT patent application simplifies the process of filing patent applications in foreign countries.  By using a PCT application, an inventor can file a single patent application in one language with one patent office in order to simultaneously seek protection for an invention in over one hundred PCT member-countries around the world.  (For a complete list of PCT countries, check out information on the WIPO site.

A PCT (Patent Cooporation Treaty), is a patent application filed under the Patent Cooporation Treaty.  The PCT patent application must be filed within 12 months of the earliest priority date.

For example – if an inventor filed a provisional patent application on Jan. 1, 2010, she must file a PCT patent application before Jan. 1, 2011.  If an inventor never filed a provisional patent application, rather, filed a non-provisional patent application on Jan. 1, 2010, the inventor must file a PCT application before Jan. 1, 2011.  Finally, say an inventor filed a provisional patent application on Jan. 1, 2010, and then filed a non-provisional patent application (claiming priority to the provisional patent application) on July 17, 2010.  That inventor must file a PCT application by Jan. 1, 2011 (12 months from the earliest priority date).

The PCT application delays the expenses associated with applying for patent protection in other countries for up to an additional 18 months.  In other words, if an inventor does not go through the PCT application process, she is required to file her patent application in the desired foreign countries within 12 months of the earliest priority date.  By filing a PCT application, the inventor can delay filing in individual foreign countries for up to an additional 10-18 months (depending on the country).

Filing a PCT application allows the inventor more time to assess the commercial viability of her invention and also allows her to determine which countries are worth filing in.

The following is an example of time line summary for filing patent applications:

January 1, 2010   Earliest filing date = priority date = date applicant files Provisional Patent Application or Non-Provisional Patent Application Claiming Invention

January 1, 2011   Priority Date + 12 months deadline for filing Non-Provisional Patent Application claiming priority to a Provisional Patent Application AND deadline for filing PCT patent application OR foreign patent filing directly into desired foreign countries

Jill’s note:  Filing and prosecuting patents to obtain the strongest protection in key countries is complicated.  It takes an experienced patent attorney to get it right.  To find out more information about the patent process, stay tuned for more posts by our contributing editor and patent prosecuting attorney Heather N. Schafer.