INTERNATIONAL PATENT APPLICATION VS. DIRECT OVERSEAS PATENT FILING

It is a question which is often asked: should I file an international patent application (“PCT” or Patent Co-operation Treaty), or should I file directly in a number of overseas jurisdictions?

The typical scenario is that you, as the inventor, will have filed a local or domestic patent application in your home territory, such as the USA or the United Kingdom, in order to provide some initial patent protection for your invention. This then enables the inventor to start disclosing the idea in order to try and establish whether there is any merit in investing further funds into the invention, such as for product design and prototyping.

Filing in your home country first is also important as it allows you to start looking at possible markets overseas, without initially having to undergo the expense associated with filing patent applications there. The Paris Convention, to which nearly all major countries of the world and most of the minor countries are signatories, allows a 12 months grace period in which one can file a patent application in one member country, such as the USA or the UK, and then file in other overseas jurisdictions before the first anniversary thereby allowing retrospective or back dating of that later patent filing.

This is of great benefit, since an inventor need not go to the significant expense of filing in many countries straightaway before he or she has had some commercial feedback regarding the idea.

However, once the 12 month grace period for filing overseas does come to an end, what are the options?

Unless you know exactly where your overseas or foreign markets are going to be, and that you will never have any further markets abroad, then the international patent application (“PCT”) route will keep your options open for patent protection in more than one hundred and forty countries worldwide. In other words, the PCT route keeps a significant number of ‘doors’ open for you worldwide while you try and decide which markets might be of interest.

The PCT route therefore provides flexibility and keeps your options open.

Furthermore, although an international patent application is a reasonable expense, it is also the cheaper option in the short term thus reducing your costs early on.

Additionally, if a competitor is monitoring your patent activity, the PCT route will keep them guessing due to large number of jurisdictions that the international patent application extends.

So what are the downsides to an international (“PCT”) patent application? Firstly, no international or worldwide patent is granted. The international patent application, if filed at or near to the first anniversary of your first domestic patent filing, will in essence ‘buy’ you an extra 18 months of time to explore market possibilities overseas. At the end of this further 18 months of time, you will have to choose which countries covered by the international patent application you actually want patent protection in, and then the international patent application has to undergo a conversion process to convert it into the chosen national patent application (i.e. a local patent application in the USA, UK, Australia, Japan, China, etc.), and/or the chosen regional patent application (i.e. a patent application covering Europe, Eurasia, etc.). And there are reasonably significant costs at this conversion stage similar to those if direct filing.

Once converted, the international patent application effectively dies, and you pursue the converted national and/or regional patent applications before the respective local or regional patent offices in the normal way.

The other option, mentioned above, is to consider filing direct patent applications in your selected jurisdictions overseas instead of opting for the PCT route. Generally, this will be more expensive in the shorter term, but slightly cheaper in the longer run because you will have cut out the middle portion of filing the international patent application.

The downside to filing directly in overseas jurisdictions at your first anniversary of your local or domestic patent application is that the door of opportunity then closes should you later on find a new market opportunity becomes available that requires patent protection. Remember, outside of the first 12 months after your initial patent filing, you can no longer backdate any new patent application and your original patent application may consequently knockout your later filing if it is for the same invention.

However, if you do know exactly where your markets are going to be, and for British inventors these are often Europe and the USA, and you are happy to effectively give up the chance of any further patent protection in any other jurisdiction, then this will ultimately be your more cost-effective option in the longer run.

Of course, advice must be provided on a case-by-case basis, but the general outline provided above regarding the pros and cons of international patent applications versus direct overseas patent filings is extremely typical and one that we encounter on a daily basis in our busy patent practice.

If you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European patent attorney.