How to Apply for an International Patent

If you have an invention that you think is marketable, you should consider applying for a patent. In the United States, you would apply for a domestic patent through the United States Patent and Trademark Office (USPTO). Applying for a domestic patent is also the first step in applying for foreign patent rights, known as either a Paris Convention or a Patent Cooperation Treaty (PCT) application. If you believe that your invention has a competitive market abroad, you should consider applying for foreign patents to protect your legal rights to your product in other countries.

Part 1

Part 1 of 3:

Determining the Patentability of your Invention

1
Determine if you have a patentable invention. U.S. law sets forth the following requirements for something that can be patented:
- It must be invented or discovered by a person;
- It must be either a new and useful process, machine, manufacture, or composition of matter; or it must be an improvement on an existing invention; and (in any case)
- It must include an "inventive step", e.g., an improvement or combination that would be "non-obvious to a person having ordinary skill in the art", at the time of filing the application.^{[1]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source} ^{[2]XResearch source} ^{[3]XResearch source}
2
Verify your invention is not already patented, disclosed or being used. If your invention meets the requirements for a patentable invention, you must conduct a search to determine whether your idea has already been patented. The US Patent and Trademark Office recommends you follow the following seven steps to search for a patent:
- Brainstorm terms that are related to your invention. When coming up with terms, think about words relevant to your inventions purpose, make-up, and use.
- Search for your terms on the USPTO website at: http://www.uspto.gov. You should conduct your search in the following format "CPC Scheme [plus keywords(s) describing invention]." This search should help you locate the invention’s Cooperative Patent Classification (CPC).
- Once you have located the CPC, review the linked definition to make sure that the definition fits your invention.
- Search the USPTO patent database, http://appft.uspto.gov, for all patents matching your CPC. After identifying the patents, quickly skim the first page of each patent to determine whether it matches your own invention. If there is a similarity, read the documents more closely including descriptions of the intended use of the invention and any drawings of the invention. Pay close attention to cited references.
- If your initial search does not turn up any similar inventions in any patents, expand your search by performing a key word search on the http://appft.uspto.gov website. You can also search additional databases at http://worldwide.espacenet.com and http://www.uspto.gov/ptrc.^{[4]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source}
- Just as for US patents, your foreign patents must define an invention that is "new and non-obvious" with respect to any invention already disclosed in a publication or in public use anywhere in the world, whether or not is has ever been patented. The more you learn about any related inventions, the easier it will be to determine whether to pursue your own patent.
3
Hire a patent lawyer. Once you have conducted your initial search and found no matching patents, you should hire a patent lawyer. The filing of domestic and international patents requires significant paperwork, legal knowledge of patent law, and experience. While you can attempt to complete the filings yourself, it is strongly advised that you hire someone who has previously applied for patents. This attorney should be able to streamline the process, ensure that you don’t miss any deadlines, and prepare your paperwork so that it meets the requirements.
- The USTPO maintains a list of registered patent attorneys here: https://oedci.uspto.gov/OEDCI/.
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Part 2

Part 2 of 3:

Applying for a Patent in Your Region

1
Determine if you are filing a provisional or non-provisional application. A provisional application is essentially a placeholder where you begin to protect your invention before its cost and market is fully evaluated. A provisional application is not evaluated for patentability by the USPTO. If you file a provisional application, you will eventually need to file a non-provisional application within one year of filing the provisional application. A provisional application is discarded if it is not timely referenced by a non-provisional application.
- A provisional application may be right for you if you are unsure of the commercial value of your invention but you want to protect your invention. It is less expensive to file a provisional application and you have 12 months to determine if you want to move forward with the cost and time of filing a non-provisional application to obtain an actual patent.
- If you have already determined the commercial value of your invention and intend to move forward with the production of the product, you should apply for a non-provisional patent and save yourself the time of completing two applications.
2
Draft a provisional patent application. The provisional patent application provides a means to delay filing for a U.S. patent while officially reserving your priority of invention over other applicants, even if you publicly disclose or use your invention. A provisional application allows you to say that you have a patent pending. You can file a provisional application without a formal patent claim, oath, declaration, or an information disclosure statement.^{[5]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source} A provisional patent application must include:
- A description of the invention in clear, concise and exact terms.^{[6]XResearch source}
- Any drawings necessary to understand the invention.
- A coversheet that identifies the application as provisional and provides: the names and residences of all inventors; the invention’s title; the name and registration number of any registered attorney/agent working on the application; the mailing address; and the name of any U.S. Government agency with an interest in the application.
- The application filing fee, which can be located at: http://www.uspto.gov/learning-and-resources/fees-and-payment.
- The coversheet can be downloaded from: http://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012.
3
Draft a non-provisional patent application. Unlike the provisional patent application, a non-provisional patent application triggers a search of "prior art" and examination of your claims with respect to the search results. If it meets all of the requirements, a patent will be issued. In order to submit a complete non-provisional patent application, your application must include:
- A Utility Patent Application Transmittal Form, which lists the required documents for the application and contains the inventor(s) signature or the signature of the inventor’s attorney.
- A Fee Transmittal Form that specifies the fees that are being submitted with the application.
- A signed Application Data Sheet that lists inventor and/or applicant information, an address for correspondence, a description of the domestic benefit, and any foreign priority or assignee information.
- A certification of small and micro entity status, if applicable. If you qualified as a small and micro entity, you must submit one of the following forms: Certification based on gross income or Certification based on institution of higher learning.
- Any specification documents, which are documents that describe the invention and how it is used. For a full list of specification requirements visit: http://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e44589.
- All drawings that are necessary to understand the invention.^{[7]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source}
- The inventor’s oath or declaration that states the application was made by or on behalf of the inventor, that the invention is believed to be an original invention, and an acknowledgement that any false statement is punishable under the law and by imprisonment. The inventor (or multiple inventors of any claimed invention) must sign the document in most cases.^{[8]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source}
- You can find a link to patent forms at: http://www.uspto.gov/patent/patents-forms.
4
File your patent application with the USPTO. Both provisional and non-provisional applications for patents can be filed in the following ways:
- Electronically using the EFS-Web. All documents must be submitted in pdf format. You can register for the EFS-Web system, file your documents, and pay your fees at http://www.uspto.gov/patents-application-process/applying-online/about-efs-web.
- You can submit your application and fee by mail to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.^{[9]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source}
- If you use the US Priority Mail® service, following the relevant USPTO rules, you may obtain the "filing date" as of the date your application is deposited into the US mail.
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Part 3

Part 3 of 3:

Filing for Foreign Patent Priority under PCT

1
Be mindful of the 12-month deadline for filing an international patent under the Patent Cooperation Treaty or under the Paris Convention. The PCT is an international treaty that allows member countries to file a single international patent application that would be recognized by the other 148 member countries. An application under the Paris Convention grants you the right to claim your original filing priority from the US application date, in countries that adhere to that treaty. In either case, this application for patent priority must be filed within twelve months of the date that you filed your provisional or non-provisional application with the USTPO, in order to claim the full priority of your earliest filing.
- If you miss the one-year deadline, but your US patent has not yet been issued, you may still be able to preserve your patent rights to the extent no other applicants have filed, published or publicly used any "intervening art" that compromises your claims.
2
Check foreign country deadlines. Typically, once you submit your PCT patent application you will have between 18 and 30 months to amend and file your patent in individual countries. This is called “nationalizing” your patent and is discussed below. Before you file your PCT application, you should be aware of the deadlines so that you can plan your patent application timeline accordingly.^{[10]XResearch source}
- Failure to file on time may permanently extinguish your potential patent rights in foreign countries.
- You can review a list of country-specific deadlines for nationalizing patents at: http://www.wipo.int/pct/en/texts/time_limits.html
3
Draft a PCT patent application. The PCT patent application requires a number of documents and information for it to be deemed complete. You should consider hiring an attorney that specializes in patent law and is experienced in PCT patents to assist you in drafting your application. Your PCT application must include the following:
- A PCT Request form that sets forth many of the requirements of the PCT application. The request contains: a petition that the application be processed; the title of the invention; the name of the inventor and/or agent; the inventor’s residence and address; and the inventor’s choice of which international searching agencies he or she wants to conduct the international patent search. The form is located at: http://www.wipo.int/pct/en/forms/
- The Description must explain the invention in a clear and complete manner. The description should include the following parts: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention” or, where appropriate “Mode(s) for Carrying Out the Invention,” “Industrial Applicability,” and, if applicable, “Sequence Listing” and “Sequence Listing Free Text.”
- The Claims section must define the protection that is being sought for the invention.
- The Drawings section include any technical drawings, perspectives, sections, cross-sections, or other diagrams that are necessary for a reviewer to understand the invention. ^{[11]XResearch source}
- For applications filed via EFS-Web the application must be in PDF format and on paper size A4.
- All documents must have a minimum resolution of 300 dpi.^{[12]XTrustworthy SourceUnited States Patent and Trademark OfficeU.S. government agency responsible for registering and protecting patents and trademarksGo to source}
4
File PCT patent application. A PCT patent application can be filed with the International Bureau of the World Intellectual Property Organization (WIPO) in the following ways:
- Electronically via the ePCT system located at https://pct.wipo.int/LoginForms/epct.jsp; or on the PCT-SAFE system located at http://www.wipo.int/pct-safe/en/.
- By fax to (41-22) 910 06 10 (or (41-22) 338 70 60 in case of transmission difficulties). You must forward the original document within 14 days to the address listed below.
- By mail or hand delivery to: International Bureau of WIPO, PCT Receiving Office Section, 34, chemin des Colombettes, 1211 Geneva 20, Switzerland.
- Residents and nationals of the USA may also file a PCT application in the International Bureau of the USPTO, serving as a PCT receiving office.
5
Pay required fees. In order for your patent application to be reviewed, you must pay the required fees.
- The fees can be paid in Swiss francs, US dollars, or Euros.
- A list of required fees can be found at: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_ib.pdf.
- Application fees can be paid by credit card, account debit, bank transfer or by check made payable to the World Intellectual Property Organization.^{[13]XResearch source}
Once you have submitted your PCT application, one of the international patent search companies will perform a patent search and write a report as to the patentability of your invention. If your patent is accepted, your application will be published along with the patentability opinion. You also have the option to withdraw your application.^{[14]XResearch source}
7
Nationalize your foreign patent. Once you have submitted your application and received a favorable opinion on patentability, you must “nationalize” your PCT application in any country that you want to grant you a patent. For example, if you want France and China to grant you a patent, you must submit your PCT application to each of those countries.
- You may also request a preliminary international examination prior to nationalizing your application.
- As discussed above, each jurisdiction has specific deadlines for when you must nationalize your application. You must file your application before the deadline passes.
- Typically for nationalization you will have to pay a fee, submit some documentation and potentially translate your application. Since each country has different rules, it is wise to hire a local attorney in the country that you are seeking patent protection. Your U.S. attorney should be able to set up this arrangement and work with local lawyers to ensure the application is filed correctly.
- You want to nationalize your application where you have expected or actual sales of your invention and the risk of local competition. The cost for nationalization can run between $4000 and $7000 per country.^{[15]XResearch source}
8
Enforce your patent. If someone makes, uses, sells, or imports your patented invention without permission. This is called patent infringement. In order to secure the right to sue for patent infringement, you must have nationalized your patent in the foreign jurisdiction where your patent was made, used, sold or imported unlawfully.
- Even though countries may allow a lawsuit for patent infringement, not all countries have the legal mechanisms in place to actually enforce the decision.
- Certain international treaties, such as the North American Free Trade Agreement (NAFTA) or the International treaties such as the North American Free Trade Agreement (NAFTA) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), have provisions to enforce patents and provide remedies for patent infringement. However, these treaties are only relevant if the country where the infringement occurred is a party to the treaty.^{[16]XResearch source}
- If you believe that your patent was infringed, ask your domestic attorney speak with the local attorney who you used for the nationalization process. They should be able to help you bring a patent enforcement case.
- As with US patent rights, you must pay the periodic fees to maintain the enforceability of your patent in each country, and otherwise your rights lapse earlier than the 20-year (or 15-year) duration.
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The process of filing for patent protection abroad varies greatly depending on the countries you choose, as each country has different criteria and a different process for patent applications.
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You should hire an attorney to assist you throughout the patent application process.
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If you only need patent protection in two or three other countries, filing (within a year) under the Paris Convention may be more economical than filing and fees under PCT.
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