To get foreign/international patent applications , the filing deadline is one year from the priority date through a convention route. The priority date is the earliest filing date or first filing date, which may be either a provisional or non-provisional application.
What are the Foreign/International Patent Filing Options?
Foreign filing / International Patent Filing options include convention application and PCT application, and these options basically provide different time lines to file a patent application in different countries or jurisdiction:
- Convention Filing : is filing a patent application directly in each desired country within 12 months of the priority date;
- PCT Filing: requires the applicant to file an international application in the International bureau or the receiving office within 12 months of the priority date. The PCT provides an extended time line of 18 or 19 months for filing the application in each desired country and also provides patentability opinions on each application. This means an international application provides an up to 30/31 months of the priority date for a patent application to move to a foreign country or jurisdiction.
Direct Filing or Convention application
Direct filing also known as the Convention patent application, within 12 months of the priority date (first filing date), in a particular country of interest, directly.
Timeline: within 12 months of provisional or complete filing, calculated from the first filing date or priority date.
Advantage: cost effective in case less than 5 countries
Recommendations:if the applicant or the invention does not have the potential to be commercialized in several countries. It should be opted only if:
- the invention need to be protect in less than 5 countries; and
- the application need to be filed in countries who are not the member of PCT such as UAE, Taiwan etc.
PCT Filing or Patent Cooperation Treaty Filings (WIPO)
A PCT just acts as a drop box to provide an extended time for the patent application to be filed in foreign countries individually.
Timeline: within 12 months of provisional or complete filing calculated from the first filing date or priority date a PCT application needs to be filed
Advantage: Additional 18/19 months time (Total 30/31 months time from date of first filing) secured to decide the countries in which the patent application needs to be filed.
Recommendations: Usually opted if the applicant is looking to commercials in multiple countries and negotiation for commercialization is ongoing. It should be opted only if:
- the invention need to be protected in more than 5 countries;
- the inventor needs time for analyzing opportunities in different countries; and
- the opinion on patentability is sought, as PCT performs International search and International Preliminary examination and allows an applicant to modify their application based on PCT search reports, this in turn saves the cost of prosecution in each individual country during national phase.