How To Select the Best Path for Patent Applications in Foreign Jurisdictions
My company is contemplating filing Patent Applications in foreign jurisdictions. Is the use of the Patent Cooperation Treaty or the Paris Convention Treaty the better route?
Patent Cooperation Treaty vs. Paris Convention Treaty
Your business model and judgement determine the best course for the filing of Patent Applications in foreign jurisdictions. Both the Paris Convention Treaty and the Patent Cooperation Treaty routes have advantages and disadvantages.
Under each Treaty, the Applicant makes a claim to the priority application (document) that was filed in a jurisdiction other than the jurisdiction (country/region/union) which you desire to file the new Patent Application. The priority document can be a non-provisional, a provisional or an international Patent Application.
The Paris Convention Treaty
- The non-provisional Patent Application must be filed before the expiration of one year following the filing of the priority document
- For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
- If you are only filing in a few foreign jurisdictions, the Paris Convention will likely be the least expensive route to file the foreign Patent Application
- Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent
The Patent Cooperation Treaty (PCT)
- The non-provisional Patent Application must be filed before the expiration of thirty months (some jurisdictions allow thirty-one months) following the filing of the priority document
- For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
- The PCT Application can be filed as the original and priority document
- An International Search Report is generated by the International Searching Authority of the World Intellectual Property Organization
- When needed, the International Search Report can provide a basis for amending the claims of the PCT Application prior to entry into the national stage of a foreign jurisdiction’s Patent Office or the United States Patent Office.
- Amendment of the claims of a PCT Application prior to entry into the national stage can result in a speedier and more cost-effective issuance of a Patent in the United States or a foreign jurisdiction
- Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent
If you have questions about filing Patent Applications under the Paris Convention Treaty or the Patent Cooperation Treaty, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.
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