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How Do I File for International Patent Protection (PCT Application)?

A PCT application is an international application that allows you to reserve your priority in most countries with a single filing. Once you have a PCT application on file, your application undergoes a form of “preliminary examination” in which the international search authority renders a patentability opinion.  With this opinion, you can choose to enter Patent Examination on a country-by-country basis – one-by-one, or all at once (Europe has a unified patent office for each member of the EU, while Asian countries have separate patent offices).  Any country that is member to the PCT (Patent Cooperation Treaty) must honor the patent priority established by your international patent application, but there is still an examination process.

If you are considering international protection, the PCT application is a good tool to lock down your priority in most of the world with a single filing. Having made this single filing, you will then have 30 months to decide in which countries you’d like to obtain a patent based on your PCT application.   Without a PCT application, you’d need to separately apply for a patent in each country with different rules and regulations, all within 12 months of whichever country you filed in first (assuming that the first-filing jurisdiction is recognized by the subsequent jurisdiction).

If you’re unsure about international patent protection, you can start out with a patent filing in the US.  As soon as you file a formal, non-provisional U.S. Patent Application, you have a period of one (1) year to decide if you want to pursue international patent protection (better known as a Patent Cooperation Treaty (PCT) application). This one year deadline is an important date to consider, as some foreign countries will not grant you patent rights if you’ve publicly disclosed your invention without first filing a patent application before your public disclosure.  Alternatively, you can file a PCT directly without having first made a US Filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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