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Truth or Myth: Does an International Patent Exist?

Almost every inventor has asked, “Can I get an international patent?” The simple answer is, no.

Let’s be clear, there is no such thing as an international patent. However, an inventor can file an “international patent application” that essentially takes the place of the many individual foreign patent applications required to obtain overseas protection. But like Cinderella discovered with her pumpkin coach, an international patent application only lasts for a finite period of time. If certain actions are not taken by the inventor (in this case, a little bit more than just kissing the prince), the application will lapse and the opportunity to obtain patent protection abroad will vanish. 

The International Patent Application

What is an international patent application? It is akin to the Common Application used by every graduating high school senior who applies to college, which a student completes one application and checks boxes for the corresponding schools to which they would like the application sent. In the case of the international patent application, this is like filing of a Patent Cooperation Treaty (PCT) Application.

The international patent application really came into being with the ratification of the Patent Cooperation Treaty in 1970. The Treaty went into effect on January 24, 1970, with 18 Contracting States, and was subsequently amended in 1974, 1984 and 2002. The Treaty provided a unified procedure for filing patent applications in each of the Contracting States. It was and continues to be administered by the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations that is headquartered in Geneva, Switzerland.

Contracting States, which are partners to the PCT, constitute the International Patent Cooperation Union. Most of the world’s nations are members, including all major industrialized countries. Two notable exceptions to the list of Contracting States are Argentina and Taiwan. As of December 1, 2009, 142 countries were members of the union. A listing of all of the Contracting States is provided in Exhibit 1.

Exhibit 1: Contracting States of the International Patent Cooperation Union

Contracting States of the International Patent Cooperation Union

Source: World Intellectual Property Organization

The PCT System allows the inventor to file a single patent application (PCT Application) in a single language. This PCT Application can lead to the granting of a patent in any of the Contracting States. Following the filing of a PCT Application, WIPO will perform a series of reviews and searches as to the claims being asserted, thus usually avoiding the need to repeat such steps in each elected country in which a patent is desired. These formalized search and review steps will be discussed in more detail below. It is key to remember that the PCT system does not examine the PCT Application fully and does not grant any patents. However, the PCT system does provide the applicant with critical information to assess his prospects of getting a patent granted in each country before significant filing costs are incurred. 

There are many advantages for the applicant to filing the PCT Application. It allows patents to be obtained in many different countries, while deferring significant costs of the numerous individual country application filings. Also, by filing a PCT application within 12 months of the first application (this may be either a provisional application or non-provisional application) or priority date, the applicant can extend the filing date for separate national patent applications by a whopping 18 months. This extra time is important, as it allows the applicant to refine and improve the invention; perform additional market research to determine the countries in which the invention is commercially viable; make necessary changes to the application before filing the regional and/or individual national applications; perform further tests on the invention and raise investment capital for future commercial exploitation or even find a potential licensee of the technology.

There are some disadvantages to filing a PCT Application vs. individual foreign patent applications. These include potentially higher overall costs and longer time periods for individual patents to be granted.

The International Phase

The PCT Application has two phases: International and National/Regional. The first step in the International Phase is the filing of the PCT Application with a suitable patent or receiving office. The applicant needs to be aware that certain international application formalities have to be satisfied at the time of filing.