How to Patent an Idea Internationally?

Patent Cooperation Treaty (PCT) Application

To protect intellectual property rights of innovators and inventors internationally 18 states signed the 1970 Patent Cooperation Treaty (PCT). The international treaty provides a global structure for patent applicants’, SMEs, start ups, innovators and inventors to protect their intellectual property rights in every state signed onto the treaty. Under PCT treaty, the patent applicant can seek patent protection for an invention simultaneously in each member state of the PCT treaty by filing international patent application at WIPO instead of filing numerous separate national patent applications in each country. Patent cooperation treaty members comprise 146 states. Filing of PCT national phase application in India can be done within 31 months deadline from the priority date.

PCT National Filing Phase

The patent applications that are filed before patent offices of the member countries of the Patent Cooperation Treaty (PCT) are known as national phase patent application. However, the parent patent application filed before WIPO is known as international phase patent application.

Patent Rights are territorial in nature. This means that in order to protect an invention in India, a patent application has to filed in India aiming at grant of corresponding patent in India. Likewise for all other countries. There is no process of a worldwide grant of patent that can give worldwide protection through a single application. However, international protection of an invention is possible through the following means.

• File patent application directly outside India (through Convention or Patent Cooperation Treaty (PCT) route) without filing a patent application in India after taking a Foreign Filing License (FFL).
• File patent application in India, and within 12 months of the priority date file Convention Applications in desired countries.
• File PCT application within 12 months of the priority date.

PCT International Filing Phase

When the international phase patent application is directly filed before WIPO, the Receiving Office (RO) in this case is WIPO itself who receives the patent application. While filing international patent application the patent applicant has to select the International Searching Authority (ISA) and pay the fees for the same. The International Searching Authority (ISA) performs a patentability search of the invention, which is the subject matter of the international patent filed before WIPO. The patent applicant has the option to opt for preliminary patent examination which is undertaken by International Preliminary Examining Authority (IPEA). Once the patent is filed under national phase the patent examiner examines the invention in accordance with the patent law prevailing in that country. For example, if a foreign patent applicant enters India under the national phase, the Indian Patent Act of 1970 would be applicable.

The PCT authority accepts all types of inventions and does not provide a checklist as what is patentable under the law. The international patent application is only a filing mechanism to file patents and enter the designated foreign countries under the national phase. Under Rules 39 and 67, the International Searching and Preliminary Examining Authorities should not carry out search and examination on types of subject matter, which relates to scientific and mathematical theories, methods of doing business and computer programs. The PCT mechanism is a easy way to file patents in foreign countries and the written opinion issued by the International Searching Authority (ISA) is not binding in the designated states. Patentability of an invention is determined in accordance with the prevailing patent laws of different countries. In one or more situations a patent granted by the USPTO might not be patentable in India.

The main advantage of Patent Cooperation Treaty (PCT) patent filing is that by filing one patent specification for the invention before the WIPO, the patent applicant can enter and seek for patent protection for an invention in many countries who are members of the Patent Cooperation Treaty (PCT).

Priority date is when an invention is first filed, where in a provisional or a complete application. However, applications via Convention or PCT route have to be complete applications.

Convention application refers to a patent application filed in accordance with the terms of Paris Convention that facilitates direct filing in another country for all members of the convention. Members include India and all major countries. Filing through Paris convention has to be done within 12 months from priority date.

Patent Cooperation Treaty (PCT) is an international treaty with more than 145 Contracting States and makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. However, it should be noted that the granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. Such applications can be filed within 30-34 months (per jurisdiction) of the priority date, instead of usual 12 months. Besides, acting as a ‘single window’ during international phase, PCT simplifies documentation and logistics aspects. Further, the PCT also provides for an International Search Report on the invention that can give a glimpse of chances of patent grant in multiple jurisdictions.

Decide whether you need an International Patent for Invention

How to patent guide for startups: Individual inventors and startups that think and dream big often come up with patentable ideas for which they wish to file international patents. The inventive concept has to be protected legally before any other party can copy it. Before beginning the process and steps to file an international patent one should ask the question when is the right time to file or apply for international patent? As a business owner if you are thinking about expanding your business in one or more foreign countries, getting an international patent under Patent Cooperation Treaty (PCT) system is a good option. Our team of international patent attorneys is based in Asia. We would like to explain with you about international patents & how to patent innovative systems. How do you get worldwide protection for your invention? Many foreign inventors think and have a point of view that filing international patents gives and grants them protection in 140+ countries across the globe. However, this is not TRUE. The advantage of filing international patent for your invention is entering the member countries of the Patent Cooperation Treaty (PCT) system in 30 or 31 months from the first patent filing date in the home country.

Cost for Filing International Patents

The cost of applying international patents will depend on many parameters. The first important consideration is whether the patent applicant is an individual or filing international patent as business entity. The cost and fee structure of PCT before WIPO is almost four times the individual fees for the business entity.

Another very important factor is selection of international searching authority (ISA) by the patent applicant. If you have already filed and applied for patent for your invention in home country you can file a complete patent application with patent claims as international patent before WIPO, Geneva. Filing a PCT patent application will cost approximately $1500-USD 2500 depending upon the patent applicant status and selection of international searching authority (ISA). The PCT international patent provides the inventor with the legal right to enter international patent application in other countries under national phase for example in India: National Phase Patent Filing in India. So filing international patent in individual capacity can save cost for the international patent application.

Where can a PCT Patent Application be filed?

In India, the Patent Office governed by the Controller General of Patents Designs and Trademarks handles the PCT filing of patent applications. In accordance with the ‎Patent Cooperation Treaty, the patent applicants are required to file a patent application under the PCT, either directly or within 31 months of the earliest priority date. The PCT patent application can be filed with the Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata.

On the other hand, the patent applicant can either file an international PCT application with a local / regional patent office, or directly with the International Bureau (IB) of the WIPO. At the time of filing such PCT application, the patent applicants are required to comply with the PCT formality requirements, in one language. In addition, the patent applicant is required to pay the requisite fees.

ISA (International Search Authority)

With regards to the international patent filing process under the PCT, the applicants are required to select an “International Searching Authority” while filing the request form RO-101. In use, the ISA refers to one of the world’s major patent Offices (as provided by the WIPO) for identifying the published patent documents and technical literature (“prior art”) which may have an influence on whether the claimed invention is patentable. Accordingly, once the patent applicant selects the desired ISA, the ISA conducts a thorough patent search covering both the patent and non-patent prior art literature, and subsequently establishes a written opinion (WO) on the invention’s potential patentability.

PCT International Patent Publication

Once the International Searching Authority (ISA) conducts a prior art search and establishes a written opinion on the patentability, as soon as possible after the expiration of 18 months from the earliest filing date, the content of the PCT international patent application is disclosed to the world by WIPO via its international patent database which is accessible over internet.

Patent Research Attorney for Protecting Business Methods

Business method patent attorney will assist you understand how to protect business method by combining it with software application. A business method patent attorney is a technology lawyer & patent attorney manages the intellectual property practice at the law firm by focusing on strategic patent prosecution, drafting enforceable patent claims, writing local and international patent applications, patent counselling, patent portfolio management, and patent litigation, in the field of computer engineering, communications, and software technologies.

The patent projects begin by conducting patent prior art search, analysing patent eligibility by performing patentability analysis, drafting of the patent application, filing of parent patent application, filing PCT applications under International Phase and National Phase, responding to objections raised by patent offices, conducting patent hearings and drafting legal agreements and contracts in the business industry.

As strategic patent counsel, we work with clients in aligning the patent prosecution process with client’s core business strategies, in addition to drafting patent claims, patent application preparation and prosecution focused on securing patents, determining freedom-to-operate rights, and analysing validity of granted patents.

Global Patent Filing Strategy

A global patent filing strategy should be part of a company’s overall growth strategy. The patent strategyshould be based on the principle that intellectual property is the most valuable asset that an enterprise has. It is also vital that an applicant seek professional patent attorney advice at the initial stages to ensure the success of the international patent application. In addition, an applicant should seek guiding principles for the drafting of a patent application to ensure that it is drafted correctly.

Unlike the US, India, and other countries that have a strict and regulated process, India has laws that prohibit the use of post-filed experimental data in the preparation of a patent application.  An organization’s global patent filing strategy should be based on the product or technology it is planning to protect. This may require filing in more than one jurisdiction, depending on the country. The priority of each country should be determined according to its importance to the organization. In some cases, the priority of a country must be decided upon.

Taking the time to evaluate the market for a specific product will help the organization determine which countries to file in.  An organization should also determine the priority of a country. Some companies decide not to file patents in Country D because there is no meaningful revenue in the country. In these cases, the decision maker may decide not to file patents in that country or maintain them in the future. In addition to revenue data, the strategy should take into account the relative strengths and weaknesses of each country’s patent system. Choosing the wrong countries could cost a company a lot of time and money.

A global patent filing strategy should consider the relative strengths and weaknesses of each country. For example, a company may decide to file software patents in China if it wants to protect its products in the market. A company may decide not to file a patent in Country D because of this. Another option would be to not file a patent in any country other than those in which the product is manufactured. This will allow the company to focus on more relevant markets.

The size of the patent application should also be considered. If the applicant wants to avoid fees, it should limit the number of claims. It is recommended to limit the number of claims and pages in a patent application. Some countries charge fees for exceeding these limits. However, the PCT doesn’t charge these charges. Besides, the size of a patent application should not exceed 10 pages. The applicant should also make sure that the country of filing is able to accommodate the number of claimed inventions.

Once an applicant has chosen a country for filing, they should carefully evaluate whether it meets their needs. The application size should not be excessive compared to the market in the country in which they intend to launch. It is important to limit the number of claims and pages in the PCT. For instance, the number of claims in the patent application should not exceed 20. In addition, the PCT may allow a company to enter a country with fewer claims than the US, but the process will take much longer.

Global Patent Filing Strategy

A global patent filing strategy should be part of a company’s overall growth strategy. The patent strategyshould be based on the principle that intellectual property is the most valuable asset that an enterprise has. It is also vital that an applicant seek professional patent attorney advice at the initial stages to ensure the success of the international patent application. In addition, an applicant should seek guiding principles for the drafting of a patent application to ensure that it is drafted correctly.

Unlike the US, India, and other countries that have a strict and regulated process, India has laws that prohibit the use of post-filed experimental data in the preparation of a patent application.  An organization’s global patent filing strategy should be based on the product or technology it is planning to protect. This may require filing in more than one jurisdiction, depending on the country. The priority of each country should be determined according to its importance to the organization. In some cases, the priority of a country must be decided upon.

Taking the time to evaluate the market for a specific product will help the organization determine which countries to file in.  An organization should also determine the priority of a country. Some companies decide not to file patents in Country D because there is no meaningful revenue in the country. In these cases, the decision maker may decide not to file patents in that country or maintain them in the future. In addition to revenue data, the strategy should take into account the relative strengths and weaknesses of each country’s patent system. Choosing the wrong countries could cost a company a lot of time and money.

A global patent filing strategy should consider the relative strengths and weaknesses of each country. For example, a company may decide to file software patents in China if it wants to protect its products in the market. A company may decide not to file a patent in Country D because of this. Another option would be to not file a patent in any country other than those in which the product is manufactured. This will allow the company to focus on more relevant markets.

The size of the patent application should also be considered. If the applicant wants to avoid fees, it should limit the number of claims. It is recommended to limit the number of claims and pages in a patent application. Some countries charge fees for exceeding these limits. However, the PCT doesn’t charge these charges. Besides, the size of a patent application should not exceed 10 pages. The applicant should also make sure that the country of filing is able to accommodate the number of claimed inventions.

Once an applicant has chosen a country for filing, they should carefully evaluate whether it meets their needs. The application size should not be excessive compared to the market in the country in which they intend to launch. It is important to limit the number of claims and pages in the PCT. For instance, the number of claims in the patent application should not exceed 20. In addition, the PCT may allow a company to enter a country with fewer claims than the US, but the process will take much longer.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.

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