Obtaining a patent in
the U.S.A. eliminates
the absolute novelty,
which is required
by most of the
foreign countries.
FAQ Foreign Patent Filing
...key requirements & vital differences
What is WIPO?
WIPO is the World Intellectual Property Organization, headquartered in Geneva, Switzerland. WIPO is the United Nations' agency dedicated to promotion and development of the international intellectual property systems. By and large, WIPO helps with the development of international patent standards design to improve knowledge sharing between its 186 member states.
What is Patent Cooperation Treaty?
The Patent Cooperation Treaty, or as commonly referred to PCT, is an international agreement for filing patent applications applicable to 117 countries. PCT simplifies the process of filing international application and delays the expenses associated with applying for patent protection abroad.
What is PCT application?
It is important to recognize that PCT does not grant international patents. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in countries that are active members of PCT. In simple terms, PCT extends the foreign filing deadline from 1 year to 2. 5 years, allowing the inventor more time to assess the commercial viability of his/her invention. Unlike the regular application process, the PCT provides for more detailed examination of your application, issuing a search report and a written opinion, which can prove quite helpful to patentability of your invention.
What is Paris Treaty?
The Paris Treaty, or the Paris Convention for the Protection of Industrial Property, is an international treaty focusing on protection of intellectual property. In essence, the treaty allows an applicant to file an application in his/her country, for the purpose of reserving the priority date. To maintain this priority date throughout the patent application process, the applicant must file further application within 12 months of obtaining the priority date. All things considered, the Paris Convention could be quite useful for inventors in need of extra time to improve or to strengthen the financial support for their invention. Remarkably, this treaty has been in force for over 130 years.
What are the main differences between filing in the U.S.A. and filing abroad?
The key differences focus on the priority date reservation. The U.S.A. follows the fist-to-invent rule, however, most of the foreign countries follow the first-to-file rule. There are also distinct differences applicable to the scope of claims that could be presented in patent applications. Other differences, as mentioned above, include the obsolete novelty requirement by many foreign nations, where as the U.S.A. provides for a one year filing window after disclosure of your invention.
Can I first secure a patent in the U.S.A. and then abroad?
No. Most of the foreign counties require an obsolete novelty from patent applicants. Which means that after you receive a patent in the U.S.A., your invention would not be considered novel because it has been disclosed to the public. This requirement doesn't apply in the same fashion to the PCT application, which allows an inventor within 30 months of filing the PCT application, to file a patent application in a foreign country without violating the novelty requirement.