With today's global industries and markets, foreign patent protection is an essential part of IP strategy. So how can an applicant gain widespread patent protection?
Patents are geographically limited. For example, a US patent gives you rights only in the US. To pursue international patent protection, you typically start by filing a "priority" patent application in your home country. This can be a regular patent application, or a provisional application in countries like the US and Australia. Either way, this "priority application" serves as a placeholder for any future international patent applications.
Then, an applicant has two choices for securing international patent protection. One is to file a Patent Cooperation Treaty (PCT) application, which reserves the applicant's right to enter over 140 countries that are members of the PCT. Read more about the PCT process here.
Alternatively (or in combination with the PCT), the applicant can file directly into the jurisdictions where he is seeking protection. Direct filing is exactly what it sounds like: the applicant prepares distinct sets of forms and files an application into each country directly.
The terms "direct filing" and "Paris Convention" are used interchangeably. The Paris Convention for the Protection of Industrial Property, established in 1883, was one of the first intellectual property treaties. Under the Paris Convention, an applicant who files for patent protection in a member country receives the same intellectual property rights as a national of that country would. The actual process of applying for patent protection under the Paris Convention is often called "direct filing."
After filing a priority application, applicants have up to 12 months to file directly into the foreign countries where they are seeking protection. The form and translation requirements differ from country to country, but it is important to note that extensions beyond the 12 month deadline are NOT available.
The Paris Convention offers some advantages over the PCT. Most importantly, there are many countries, most notably Argentina and Taiwan, that are not members of the PCT and must be filed directly into. The Paris Convention covers 174 countries, whereas the PCT covers 148.
While the PCT can be a more cost effective route when filing into multiple countries, the filing of the PCT application itself costs around $5,000 – so when filing into 3 or fewer countries it's often more cost effective to file direct.
Also, while your PCT application is "one size fits all," direct applications can be customized to each jurisdiction since a unique application is filed into each country.
The process of direct filing also involves fewer steps than the PCT, which can mean earlier prosecution and grant. With the Paris Convention, filing occurs within 12 months of the application's priority date. With the PCT, the filing of the PCT occurs within 12 months of the priority date and then the national stage ultimately occurs within 30 or 31 months of the priority date. While this extra span of time can be useful for gathering funding or deciding where to file, for some technologies, especially those with a short shelf life, it is advantageous to file as quickly as possible.
Please contact us directly to learn more about Paris Convention vs. PCT filing.
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Compared with the technical expertise required to draft a patent application, direct filing is relatively simple. However, the process requires significant time and administrative work, and a great deal of knowledge about the process in each country.
With an inovia.com account, you can get an instant quote and place a single instruction to file into multiple countries. We produce all of the forms required and send them to you in one bundle.
Registering for an inovia.com account is free and just takes a few minutes. Once registered, you will have access to our online estimation and ordering tools for PCT national stage entry, direct filing, European validation and patent translations.