If you’ve invented something new, you might be wondering how to protect your invention, not just in the United but also abroad. The good news is that you have a few options to protect your invention in the United States, as well as internationally. We will discuss them below.
How to Get a Worldwide Patent?
Unfortunately, there is no such thing as a worldwide patent, but an inventor has two options to protect his invention internationally. The first option an inventor has is to file a patent application in each country where he wants to protect his invention. The second option an inventor has is to file a PCT (Patent Treaty Cooperation) at the USPTO. Filing a PCT gives an inventor 30 months to file a regular patent application in the countries where he wants patent protection.
Filing a PCT application is similar to filing a provisional patent application with the USPTO. PCT patent applications do not turn into a granted patent, rather a PCT patent application reserves an early filing date in each country that has signed the PCT agreement.
Currently, there are approximately 160 countries that have signed the treaty and honor a PCT patent agreement. Even though not all countries have signed the treaty, most of the modern countries where you’ll be able to profit the most from your invention, have signed the treaty.
As previously mentioned, a PCT application reserves an early filing date in all the countries that have signed the treaty. So, what does this mean for you as an inventor? For an inventor, this means that although you’ve reserved an early filing date in the participating countries, if you want to patent your invention, you will have to file a patent application in every country where you want to protect your invention.
Filing a PCT application gives inventors approximately 30 months to determine whether to proceed with patenting their invention in each of the participating countries. A PCT application currently costs approximately $3,000 and paying this fee secures an early filing date for your invention, giving you thirty 30 months to decide whether pursuing a patent in any of the 160 participating countries makes sense.
Steps to Get a Worldwide Patent Using a PCT Application
- Hire an attorney to prepare and file a provisional or nonprovisional patent application at the USPTO
- Have your attorney prepare and file a PCT Application
- Choose the countries that you want to patent your invention in
- Have your attorney contact local attorneys in the countries that you want to protect your invention
- Pay any applicable patenting fees
Can You Enforce a U.S Patent in Other Countries?
If you’re reading this article, you probably know that a patent issued in the United States does not protect you in other countries. Patents issued in the United States only grant the inventor the rights to stop others from making, using, and selling the invention in the United States. For example, if you’ve patented your invention in the United States, you can’t stop someone in China from manufacturing your item and selling it. You can, however, stop them from importing it to the United States. So, how do you stop someone from copying and selling your invention in China?
You can do so by filing a patent application in China, as well as other countries where you want to protect your invention. This is where a PCT Application comes in. A PCT application sets the stage for inventors to patent their invention in approximately 160 different countries. So, is a PCT application right for you? We will answer this question below.
Should You File a PCT Patent Application?
The answer to this questions depends on whether you have established markets in different countries. For most corporations that do business throughout the world, filing a PCT application is a no brainer. However, for smaller businesses that don’t conduct business in other countries, it may not make sense to spend the time and money to prepare and file a PCT application. If you are a startup, you should contact an attorney to determine whether filing a PCT application makes sense for your particular situation.
Attorneys typically recommend filing a PCT application to businesses and startups that have an international market or distribution channel for the products that they’re offering. In this situation, it would make sense for a startup or business to pursue filing a PCT application to reserve the right to file a full-fledged patent application at a later date.
That said, if you think that you may need international patent protection for your invention, keep in mind that some countries don’t offer the 12 month grace period that the USPTO offers to inventors. Some countries require absolute novelty. Said differently, to obtain a patent abroad, some countries require the invention to be absolutely new, meaning that no disclosure of the invention has ever been made.
So, if you want to protect your invention internationally, it makes sense to keep your invention secret or to file a provisional or nonprovisional patent application in the United States. If you are unsure about this, contact a patent attorney and ask them how to proceed with marketing and patenting your invention. This is so because disclosing your invention could waive international protection for it.
Having said that, if an inventor knows the countries where he wants to protect his invention, he may benefit from only filing patent applications with those countries where he wants protection within 12 months of filing a provisional or nonprovisional patent application with the USPTO.
Protection Under a PCT Application
Filing a PCT application does not grant an inventor the right to stop others from using, making, or selling his invention. A PCT application is similar to a provisional patent in that it reserves an early filing date for the inventor in various participating countries. Filing a PCT application gives the inventor 30 months to file a regular patent application in each country the inventor wants to protect his invention.
Some inventors choose to file a PCT because it gives them additional time to market the invention, raise capital, and find licensing opportunities before spending money to patent the invention. However, some applicants believe that all they have to do is file a PCT application to protect their invention worldwide, this is not the case. After filing a PCT application, an applicant has to choose the countries where he wants patent protection and complete the process of filing a regular patent application in each country where he wants protection.
Submitting a Worldwide PCT Application
Inventors should be aware that they need to submit a PCT application as soon as they file their provisional or nonprovisional patent application in the United States. Every country has a different filing deadline that has to be met in order for an applicant to patent his invention.
Most countries require a PCT application to be submitted within 12 months of an applicant filing his provisional or (regular) nonprovisional patent application in the United States. Once an applicant files a PCT application, he typically has 30 months within which to file a regular patent application in the countries where he wants to patent his invention.
Benefits of Filing a PCT Application
The main benefit of filing a PCT application is that it reserves a priority date for inventors and gives them 30 months to decide which countries to pursue patenting their invention. Also, many inventors use this 30 month period to find investors and obtain funding for their invention.
The second benefit of filing a PCT application is that it offers inventors a way to assess the patentability of their invention. This is so because PCT applications are examined and a patent search is performed to determine whether any prior art exists to prohibit the applicant from patenting his invention. If the PCT determines that prior art exists to prohibit patenting your invention, an applicant may choose not to proceed with the costly process of patenting the invention.
The third benefit of filing a PCT application is that it offers an easy way of establishing an early filing date with approximately 160 countries. Just imagine how difficult and how much it would cost to file patent applications with 160 different countries. The PCT application makes things a lot easier by allowing an applicant to submit one application and then choose the specific countries where he wants to proceed with patenting his invention.
Getting a Worldwide Patent
By now, you probably know that patents only protect inventors in the country where the inventor obtained his patent. To protect your invention worldwide, an inventor has to file a patent application in every country where he wants protection. Filing a PCT application, commonly known as a worldwide patent application, makes obtaining a patent in other countries much easier.