In the global market, today’s prudent company must evaluate patent protection for its innovative products or services. In doing so, the question arises as to which countries a patent application will be submitted. The general rule of thumb is that a business would evaluate patent protection in countries where the technology is manufactured, marketed, and sold. But that still begs the question, in which countries will those activities occur. Those questions are often not known early in the stage of innovation. Furthermore, the America Invents Act first to file provisions mean that companies will likely file at the earliest possibility in order to have the earliest priority date. In a field of technology, such as chemistry, the innovative compound and synthesis may have occurred in the laboratory, but the profitability of large scale production, precursors for the commercialization, and target markets remain unknown. The costs for filing foreign patent applications can be high. Such costs can include official fees to the foreign country, translation costs which are necessary in most countries, as well as service fees for local agents or patent attorneys. When the innovative technology is in its infant stages, it difficult to know which countries in which to submit a patent application.
The dominant methods for multinational patent filings include the Paris Convention and PCT international patent applications. Under the Paris Convention, the decision as to where to file foreign applications must be made within one year from the date of the original United States filing. Contrast this with the PCT “international” patent application. By filing an international patent application under the PCT, you effectively defer the need for selecting and filing in the target countries by up to 30 or 31 months from the priority date, that is to say the earliest filing date of an earlier filed provisional patent application, earlier filed nonprovisional patent application, or the filing date of the PCT application. By filing an international application you will get an additional 18 months before it is necessary to decide on the specific countries on which to enter.
In order to take advantage of the additional time, the company would evaluate the technology, evaluate possible countries for filing, and prioritize countries for filing. Specific actions might include, evaluating the distinguishing features of the invention, determining the value of the technology to the business, researching competing technologies, assessing market potential and segments within the countries, and gauging patent laws and enforceability of the countries. Those and other actions could easily consume more than twelve months. The additional eighteen month deferral is generally to the company’s benefit. But note that the 30 month period is the latest possible date to file. The applicant need not wait the full 30 months. To illustrate, the full rights of the patent grant do not vest until the patent application is successfully prosecuted through the patent office of the country. Thus it may be desirable to initiate the examination process earlier. In another scenario, the applicant may wish to stagger the time period over which the patent applications (and associated costs) are directed to the selected countries.
In closing, the cost of filing the PCT is actually an additional cost. Eventually, the inventor will still have to pay the national filing fees for the selected countries. However, the option to defer those national filing fees for an additional 18 months can provide the advantage of making a more informed decision in selecting countries.
