Practice Areas | Patent | Foreign Filing Patent Applications


Once a decision has been made to file a patent application, the following options exist for filing in a foreign country: (1) file directly in the patent office of the country of interest, (2) file in a regional patent office, or (3) file using the procedures set forth in the Patent Cooperation Treaty (PCT). These filing options are discussed below.

1. National applications
Applicants may rely on the rights granted under the Paris Union Convention (that is, for member nations of the Paris Convention) for a right of priority. This right of priority allows a resident of the United States, a member of the Paris Convention, to first file a patent application in the United States, and then, within 12 months of the U.S. filing date, to file patent applications for the same invention in any of the other member countries. By treaty, the later applications receive effective filing dates that are the same as the original U.S. filing date. In other words, they would be treated as though they had been filed on the same day as the U.S. application, so long as they were filed within the 12-month period.

Applicants who file a subsequent application in a country that is NOT a member of the Paris Convention will not be given the priority of their U.S. application. If possible, applicants should consider filing any applications in non-member countries on the same day as their U.S. application.

If an applicant has only a small number of countries where she or he wants to file and chooses to actively pursue prosecution in only those countries, the applicant can avoid the costs associated with the intermediate steps of filing in the PCT or regional patent office prior to filing nationally. Some countries conduct no, or limited, examination. Disadvantages to direct national filing are that (1) each application will be independently examined (no deference given to a prior favorable review in a different country), and (2) government filing fees and translation costs will be due early in the patenting process.

2. Regional applications
A potential alternative to filing directly in each country of interest is to file in a regional patent office. These patent offices have come into existence through international treaties. Examples of regional patent offices are the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), and the Eurasian Patent Convention (EA).

Often, the EPO is the most commercially important of the regional patent offices, so its procedures will be discussed in more detail. Use of the EPO allows for a uniform procedural system for filing a patent application in member European countries. The cost of filing a patent application in the EPO is about US$10,000. This figure includes the EPO filing fees, the U.S. attorney fees, and the fees charged by the EPO associate. The EPO does not allow U.S. patent attorneys to communicate directly with it, so a European patent attorney, or agent qualified to practice in the EPO, must be hired for certain aspects of the filing and prosecution process.

After successful examination, the application is granted as a European patent. It should be noted that interim protection can be available during pendency by filing a translation of claims in each designated country. An applicant, however, does not gain any enforceable patent rights until the European patent is registered, or “validated,” in each of the countries in which protection is sought. Registration can be expensive because in addition to government issue fees and translation fees, further fees for the European associate and local agents in each country will be incurred. Once the European patent is validated, annual maintenance fees, or annuities, will be due periodically in each of the countries. Maintenance fees vary considerably from country to country.

With direct regional filings, applicants may be able to avoid some translation costs. Another advantage to direct filings is that substantive examination of the regional patent in each of the designated countries is not necessary. This makes direct regional filing especially cost-effective if protection is desired in a number of member countries, since the single regional examination replaces national examinations performed by each member country. If obtaining protection in only a few member countries is desired, it may be less expensive to file applications in each country individually, thus avoiding costs associated with the intermediate steps of first filing in the regional patent office.

3. PCT applications
The Patent Cooperation Treaty (PCT) is an international agreement that provides a unified and simplified procedure for filing multiple foreign patent applications via a single initial application. Most industrialized countries are members of the PCT, including many countries that are also members of different regional patent offices. Please see WIPO for the current list of PCT countries and their filing deadlines.

The procedures set forth in the PCT allow applicants to obtain and/or preserve the priority date of a first-filed application in any of the PCT member countries. An applicant files a copy of the application in a PCT office and pays the PCT filing fee. This filing of the patent application may be the first time it has been filed anywhere, or it can be an application that claims priority over an earlier-filed application, so long as it is filed within 12 months of the initial filing date. It is critical to keep in mind that if patent protection is desired in a non-PCT country, an applicant must file directly in that country.

When filing an international application that relies on the Paris Convention one-year grace period for a priority date, the time period for filing the foreign application is calculated from the date of the first-filed national application. For most U.S. applicants, the first-filed national application is a regular nonprovisional U.S. application. It is important to note, however, that if a U.S. provisional application is filed as the first-filed application, the one-year grace period begins with the filing of this provisional application and not with the filing of the “conversion” regular non-provisional U.S. application that claims priority over the provisional application. Thus, if a provisional application is filed, the conversion date for the nonprovisional U.S. application and the Paris Convention bar date for the filing of international applications fall on the same day. Therefore, the international application and the U.S. regular application need to be filed by the same date.

Normally, just before 30- or 31-months from the earliest priority date, the applicant again must decide whether to file applications in at least some of the designated countries, or regional offices, or to abandon the application. Because the PCT application does not, in itself, result in the granting of any national patent rights, the applicant must initiate the national stage in each of the national offices where patent protection is desired. At this point, the applicant, via a local attorney or agent, files a copy of the international application, a translation of the application (if necessary), the national fee, and any other documentation required by the national office. The remainder of the prosecution is similar to that discussed above, when an application is filed directly in a national office. The national offices, however, do give deference to the PCT international preliminary examination report and may not conduct a further search.

It should be noted that it is possible at any time during the PCT process to file one or more national-stage applications. It is not necessary to wait until the end of Chapter I or Chapter II to file a national or a regional application. PCT filings preserve future foreign patent rights and permit an applicant to delay national entry into PCT member countries for up to 30 or 31 months from the priority date. This delay period may provide opportunities for further market analysis, obtaining a licensee or business partner for the invention, and obtaining a preliminary examination report regarding the issues of novelty, inventive step, and industrial applicability of the claimed invention. Ultimately, the same costs for national filing or registration (and possible further national prosecution), patent attorney fees, local associate fees, and translation costs, if appropriate, will be incurred just as they would if the national stage was entered directly. Also, the additional intermediate costs associated with the filing and prosecution of the PCT application will be incurred.

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