Benefits of Patent Filing as Non-Provisional, Foreign and PCT

When can I file a Patent Application?

A provisional patent application has a twelve (12) month lifespan.  Despite the many advantages of filing a provisional patent application (see Provisional Patent Applications), they do expire twelve (12) months from their filing date.  If a non-provisional application is not filed that correctly claims priority to the provisional application within that one year lifespan, the benefits of the application expire and cannot be revived.  Although a provisional application in some situations can be re-filed, the original filing date is lost and the new filing date is the only priority that can be claimed.

It is, therefore, necessary that any non-provisional and foreign applications be filed within one year of the U.S. provisional application filing date to ensure you maintain your rights to the invention.

Non-Provisional Patent Applications

A non-provisional application, the most common type of which is a utility patent application, can be filed in the United States, generally by re-writing the provisional application as a utility application, and adding all of the formalities required for utility patent applications.  If needed, additional ideas and content can be added to the application when it is filed as a utility application, although anything new that is added only gets a priority date to the newly filed application and not to the earlier application that did not include it.

Foreign Patent Applications

There is not an “international patent” that covers all other countries.  Although many countries have laws similar to the United States, each country has its own patent system and laws about how an application must be filed, what types of things are patentable, and how its patents are enforced.  Nevertheless, many countries do band together to agree on a joined system or joined laws for parts of their patent law.

One example of joined international patent laws is in relation to a Patent Cooperation Treaty (“PCT”) patent application.  A PCT application is one type of foreign patent application that can be filed and instead of just a 12 month deadline for filing related applications to extend a patent priority claim, it allows for a 30 month priority claim deadline for filing into countries that have joined this treaty.  This means that by filing a PCT patent application, if you want to file in a country that is a member of the PCT, you can decide what countries you want to file in, and hold off on the expense of filing in those countries until up to 30 months after the earliest application in another country that you want to claim priority to.  In relation to US Provisional patent applications, filing of a PCT application at 12 months from the original US Provisional application filing date gives you an additional 18 months to choose and file utility-type or other-type patent applications in other member countries.

Filing in many other countries also requires a translation of your patent application into the language of that country, and amendments to your utility application to fit with the patent rules and laws of that country.  Translations and filing costs for filing in other countries, followed by the negotiation costs for negotiating the applications in those countries can become expensive and should be decided with a view to your business strategies to balance the costs with the strategic benefits of filing in particular countries.

If you do not file a patent application within a country within the deadlines required by the laws of that country, your rights are lost forever and cannot be recaptured.  It is important to understand what those deadlines and laws are before you pass those deadlines.

European Union Patent Filings from the US

Filing a patent in the European Union (EU) is an example of a group of countries joining their patent systems.  There are not many countries who have joined like the EU, but filing a patent application in a consolidated country patent system can have some advantages.  If you know, for example, that you want to have patent protection in France, Sweden, United Kingdom, Germany and Italy, filing a single patent application in the EU can save you some money and time.  Rather than negotiating with each of the individual countries for allowance of your patent, filing an EU patent application allows you to negotiate the allowance of the patent with a single examination Patent Office and then decide, once it has been allowed, which countries you want to pay to have the allowed patent registered in.  This significantly reduces the cost of the patent compared with trying to negotiate with each country separately.  If there are only a few countries you are interested in filing in, however, it is better to file directly into the individual countries. 

The costs for filing an EU application is also significantly higher (approx. 2-3 times the cost) than the cost of filing in a single country.  But, the application can be filed, and negotiated in English, with any translations depending later upon which EU countries you choose to register the allowed patent in.

Allowable Inventions in Foreign Countries

You should also be aware that certain types of inventions that are patentable in the United States may not be patentable in some foreign countries.  For example, computer software, games, methods of doing business, medical devices and treatments, tests conducted on animals, and pharmaceuticals may not be protectable in many countries.  The patentability standards (novelty, obviousness/inventive step) also differ from country to country and what may be patentable in the United States may not be patentable in other countries.  The contrary may also be true and some things are patentable in other countries, but not in the United States.  For example, in the United States, an inventor may sell, publicly use, or publish an invention within one year before filing a US patent application.  In most countries in the world, however, these activities prevent you from obtaining a patent.  If the invention was sold, publicly used, or published prior to the US filing date, please let your attorney know immediately, as it is highly relevant to your potential foreign patent application filings.

If you are considering filing a patent in any country, please contact a qualified professional at Booth Udall Fuller, PLLC to help you develop an appropriate strategy for your company to determine which countries, if any, you should file in and how those filings are going to help you increase your company value.