Priority Date

The vast majority of foreign countries will grant priority from the U.S. filing date if you file within a year of your U.S. filing date. For example, if you file in Japan within one year of filing in the United States, your U.S. filing date is counted as your Japanese priority date. The priority date is extremely important because anything published (or produced) after the priority date can be used as a reference against your application. For example, if you were to file in the United State, introduce your product, and then file in Europe a year and a day after your U.S. filing date (destroying your ability to claim priority from the U.S. filing date), you would be unable to obtain European patent protection because the product that you had introduced in the U.S. would act as a reference against the European Patent Application and would destroy the invention's novelty in Europe.

The Patent Cooperation Treaty (PCT)

Most countries in the world are signatories to the PCT. You can effectively file in all these countries at once, for a fee of about $2,300 (the fee just recently has been reduced). Typically a patent attorney will charge between $1,000 and $2,000 on top of that for preparing the filing papers. It is very important to understand that the fee for filing a PCT application is only a pittance in comparison with how much will have to be spent pursuing international coverage in any sizable subset of the PCT signatory nations. For example, to obtain patent coverage in Japan and most European countries will actually cost about $100,000. Moreover, these countries require annual maintenance fee payments for the application both before and after it issues as a patent. Counting these fees, over the life of the application/patent one can expect to pay more than $200,000. Accordingly, foreign patent prosecution is something that should be undertaken only after careful thought. It might be galling to think of the Tajikistanis gloating over free use of your invention, but it could be best just to let them have it for free, rather than spending money pursuing protection for a market that will not give you a return on that investment.

PCT timeline

A few months after filing a PCT application you should receive search results. Then, 19 months after your home country filing date, you must file a Demand for Examination, or be forced to file directly in your target countries at 20 months from your home country filing date. If you have filed a demand for examination, you will receive an International Preliminary Examination Report (IPER), which you have the right to respond to by amending the application and/or arguing.

Finally,30 months from the home country filing date is the deadline for filing most national phase and regional phase applications. A major exception is a European Patent Office application, which can be filed 31 months from the home country filing date.

Disclaimer: Nothing in this web site should be taken as legal advice. Nothing in this web site establishes an attorney client relationship with the viewer. Please feel free to contact me by telephone or by email.