Any companies and individuals desiring to exploit technological innovations on an international basis are frequently faced with a question of how best to secure foreign patent protection. 

There are two options:  (1) file individual patent applications directly in those countries of interest; or (2) utilize the Patent Cooperation Treaty (PCT).  Both options offer important advantages.

In most foreign countries, a U.S. patent applicant can file a corresponding application directly in the foreign country within one year of the U.S. filing date and claim priority based on the U.S. application.  Filing directly in this fashion tends to be cheaper than filing a PCT application and also typically results in receiving a patent grant from the foreign country sooner.  However, the costs are also incurred sooner and the decision regarding where to file must be made within this one year period.  One can also file a PCT application within this one year period and then defer the decision regarding selection of the countries where protection is desired and the associated costs for approximately another 18 months (i.e., 30 months from the U.S. filing date).

There are currently approximately 139 countries that have ratified the PCT.  Under applicable Rules, the PCT route allows one to postpone the selection and filing of corresponding National applications in these countries for up to 30 months from the applicable U.S. filing date.  A big advantage of this is that more time is allowed in which to determine whether the invention and a particular country are of sufficient commercial importance to warrant the expense of pursuing patent coverage in that country.

The PCT option is particularly advantageous for inventors seeking to find an assignee or licensee for their invention.  The 30 months from the U.S. filing date provided by the PCT may afford an opportunity to prove the commercial efficacy of the invention and find a licensee who might assume the cost of filing and prosecution of patent applications in those countries in which the licensee has an interest. 

Attorneys at Nikolai & Mersereau, P.A. routinely help clients secure patents in foreign countries using both direct and via the PCT filings.  The firm has experienced associates in most foreign countries who work directly with various foreign patent offices to secure a scope of protection commensurate with the merits of the particular invention.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com