If you apply for a patent in Mexican Patent Office, you receive a patent protection in Mexico when your patent registers.
If you apply for a patent in Canadian Intellectual Property Office, you receive a patent protection in Canada when your patent registers.
If you apply for a patent in United States Patent and Trademark Office, you receive a patent protection in the U.S. when your patent registers.
Are you starting to see a pattern here? I hope so.
This might sound obvious to some of you, but I get asked all the time, "Will my patent protect me in China? How about in Europe?" I always have to remind people that their patent application is a U.S. application, and when/if it registers, they are granted patent rights in the U.S. Now for some people, especially small business owners or folks planning on keeping their business domestic, this isn't a huge issue. Why bother seeking patent protection in foreign countries where you don't even plan on visiting?
For others though, obtaining patent protection in a wide range of countries is desirable. Think China, U.K., and Japan, for instance. And a lot of people up here north want to be protected in Canada too. So how do you obtain protection in foreign countries?
You are essentially presented with two options.
First option is pretty simple. You file a patent application in the U.S. And then later, you file a patent application in each of the countries where you desire patent protection. Most countries require patent applicants to appoint a domestic representative (i.e., patent agent/patent attorney) from the country that they are filing in to file and prosecute patent applications on the applicants' behalf. Although it's inconvenient, costly, and sometimes just plain difficult to find a reputable person from a foreign country who can help you with your patent application, it sort of makes sense that you would need to find someone who is qualified to handle your patent application for you.
The other downside of this option is that you're filing multiple patent applications for the same invention. You might have your application completed by a first patent agent/patent attorney in one country, and then have that application be handed off to a second patent agent/patent attorney in another country. This way, you can try to prevent multiple people from doing the same work. But patent agents/patent attorneys from different countries may prefer to start your application from scratch... either because translating the entire application would be more work, or because they simply prefer their own style of work. Either way, they're going to charge you the full amount to prepare a patent application from scratch and file it.
So what do you do? Well, there is a second option. You can file a patent application under the Patent Cooperation Treaty (PCT) system. PCT basically allows you to file an international patent application, so that a single patent application can be prosecuted in whichever countries you designate.
Most countries are members of the PCT, so it's no problem to designate places like Canada, U.K., Korea, and obviously, the U.S. for instance. You can file your patent application at a local patent office, then file an international patent application under the PCT within 12 months. Alternatively, you can file an international patent application without filing a patent application at a local patent office. I prefer this latter option.
When you file an international patent application under the PCT, you initially enter what is called an international stage. At this stage, an international searching authority (ISA) conducts a search. Within 16 months from filing, the ISA provides a written opinion stating whether or not your claims satisfy the provisions of PCT Article 33(1)-(4). The written opinion is non-binding so even if it's adverse, you can still move forward with your patent application. Within 18 months, your application is published and now you're ready to enter PCT Chapter 1 or Chapter 2. I won't delve into details about Chapter 1 and Chapter 2 here. But basically, you enter Chapter 2 if you file a demand for an international preliminary examination. This means you basically enter Chapter 1 by default.
Once you're at Chapter 1 or you're done with the international preliminary examination under Chapter 2, you enter what is called a national stage. This is the stage where your application is examined in each country where you seek patent protection. You're not required to move forward with your patent application in every single country you designate, so don't worry if you change your mind. You must enter the national phase within 20-30 months of filing, depending on the country. If you enter U.S. national stage, you must enter it within 30 months. When your application is in the U.S. national stage, the prosecution pretty much runs as though you've applied a regular patent application. When you enter the national stage for foreign countries, you have to find foreign representatives to help you prosecute the application, like in Option 1.
So there you have it in a nut shell. And yes. PCT is pretty confusing. BUT it's definitely a great way to streamline the initial patent filing process.
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