Introduction
When navigating the dynamic landscape of international patent protection, it is essential to understand the strategic implications of two primary routes to international patent filing: (1) using the Patent Cooperation Treaty (PCT); and (2) directly filing in individual countries through the Paris Convention. Both pathways offer distinct advantages, necessitating a thorough understanding of each to make informed filing decisions.
The PCT route, administered by the World Intellectual Property Organization (WIPO), offers a unified procedure for filing a single international patent application, effectively covering over 150 member countries. A PCT application is an international patent application that preserves the applicant’s priority date and also delays the date when the applicant is required to file foreign patent applications.
The “direct filing” route involves submitting individual patent applications directly to the patent office of each country or region from which protection is sought. Under the Paris Convention, an initial patent filing in a member country, such as the U.S., allows the applicant to then file in other signatory countries within 12 months, while retaining the initial filing date. This priority right enables the applicant to avoid being disadvantaged by their own disclosures or by third party activities occurring after the initial priority filing, but before subsequent filings in other jurisdictions.
Understanding the pros and cons of each is essential for making an informed decision that best serves the organization’s interests. Below, we delve into the pros and cons of both the PCT and direct filing routes.
The PCT Route
Using the tenets of the Patent Cooperation Treaty facilitates patent protection in over 150 countries through a single international patent application. This process can present a number of distinct advantages.
Pros:
There are, however, downsides of filing a PCT application to consider:
Cons:
Direct Filing in Individual Countries
Direct filing in individual countries bypasses the PCT process and can be an attractive alternative for applicants with specific markets in mind.
Pros:
Direct filing also has its challenges:
Cons:
Conclusion
Choosing between the PCT route or directly filing in individual countries can be a complex decision that depends on the applicant’s objectives, financial considerations, and target markets. Careful deliberation and strategic planning can ensure that the chosen patent filing route aligns with the organization’s intellectual property objectives and business goals. As a decision-maker, an understanding of these routes is vital to directing this important process.
*******************************************************************************************************************************
Bobby Soltani's practice focuses on the U.S. and foreign patent prosecution of electrical engineering and computer software matters and patent litigation, infringement opinions, licensing, and strategic portfolio management. He received a B.S. in Electrical Engineering from the University of Oklahoma (2001), and an M.S. in Electrical Engineering from Oklahoma State University (2003). Bobby holds a J.D. from the University of Oklahoma College of Law (2007).
Bobby is admitted to practice in Washington (2010) and Colorado (2007) and is registered to practice before the U.S. Patent and Trademark Office. He is a board member for the Washington State Patent Law Association (WSPLA). Bobby is also a member of the American Intellectual Property Law Association (AIPLA) and the Institute of Electrical and Electronics Engineers (IEEE). Bobby also lectures on U.S. patent practice at the University of Washington's renowned Center for Advanced Study and Research on Innovation Policy (CASRIP).
Read more about Bobby Soltani.
You can unsubscribe at any time using the link in our emails. For more details, review our privacy policy.