Where to apply for a patent?

National patent offices
National patent valid only in the country where it is granted
Non-residents can also apply for a patent
One year of “priority” for subsequent applications

European Patent Office
A European patent is equivalent to national patents in the countries where it is granted (the applicant chooses the countries)

Via the Patent Cooperation Treaty
Just one application for up to 141 countries
After the initial application phase, the international application leads to multiple national patent examination procedures
Decisions with cost implications can be delayed until 30-31 months after filing (e.g. choice of countries to file in)

There is no such thing as an international patent!

Protection Outside the U.S.

  • U.S. patents only provide protection in the U.S. for:
  • Products and processes made, used, sold or offered for sale in the U.S.
  • Imports into the U.S.
  • Foreign patents must be obtained to provide protection for products and processes not made, used, offered for sale, sold, or imported in the U.S.
  • An invention can be protected outside the U.S. by:
  • Filing individual patent applications in each country where protection is desired, based upon Paris Convention priority
  • Must file within 12-months of filing the U.S. application
  • Filing a PCT application
  • Currently 126 countries are members of the PCT.
  • Designation in each of these countries is automatic, unless expressly withdrawn
  • More specifics on PCT will be discussed later

International Protection

  • Need to file country-by-country.
  • Treaties facilitate international filings:
  • PCT Filings
  • European Patent Office
  • Differences in protection:
  • Priority based on first to file.
  • Term of patent protection may vary.
  • Foreign countries may grant more limited protection to software patents.
  • Foreign countries may not recognize business method patents.

Provisional Patent Application

  • A low-cost way to establish an earlier effective filing date for a later-filed non-provisional patent application with fewer formalities
  • Does not mature into a patent
  • May be filed in a language other than English
  • Must file a corresponding utility patent application within 12 months in order to receive the benefit of the filing date of the provisional application
  • Does not require:
  • An oath/declaration
  • A claim
  • An information disclosure statement (prior art)


A provisional patent application has to include
The specification (the written descriptive part) typically including:
Background, Summary, Description of the drawings, Detailed description of the embodiments
The drawings

Provisional Patent Applications Effect Of An Inadequate Provisional

You create an invention-make a product
You offered the invented product for sale
There is a one-year period to file a patent
You (and your patent attorney) file a quick provisional patent application
The provisional patent application sits unexamined in the Patent Office
Exactly 1 year from the provisional, you file a full patent (utility) application

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