Articles > Intellectual Property

How to File an International Patent

April 25, 2021   Jayfer JoyPhilip Evangelou

At the outset it is important to understand that there is no uniform international patent register or registration process that will allow you to protect your interest globally. Rather, patents need to be filed on a country-by-country basis. 

International patent filing strategies

Individuals or businesses that are looking to expand their patent protection worldwide would be required to decide whether or not they want international coverage, or in countries that they will predominantly operate in. Once that issue has been determined, applicants have two options when trying to gain international patent protection. The first option is to lodge an application through the Paris Convention. The second option is to file an application through the Patent Cooperation Treaty (PCT Application). 

Paris Convention

The 1883 Paris Convention allows applicants to file an initial application, with consequent applications having to be filed 12 months from the filing date. The  subsequent application will be treated as though they have been filed on the same day as the  initial application. 

When will you be looking to file a Paris Convention Application:

  • When you are only looking to seek protection in a limited amount of countries;
  • The PTC Application would not cover the application in a country that you require protection in.

PTC Application

The preferred method of gaining international protection is filing a PCT Application. The PTC Application has the same effect as submitting an application in all member states, whilst allowing you to claim priority from the initial application. 

The benefits of submitting a PCT application include:

  • One initial application 
  • Right to claim priority on the initial application,
  • Only required to comply with one set of formality requirements throughout the whole registration process, even at the national stage;
  • Postpone costs such as translation fees and national filing fees,;
  • Postpone registration requirements by 18 months compared to the Paris Convention. 
  • Additional reports, opinions and examinations are provided in order which will allow you to make a more informed decision as to where you will seek registration. 

An international patent filing strategy

The following is the recommended process in gaining international protection under the PCT.

  1. File a provisional national application. This will be recorded as your initial application
  2. Enter the international phase. This involves filing the PCT Application before 12 months claim priority on the initial application. During this time, there will be a formality check from both the national office and the International Bureau located in Switzerland. You have the option to have a secondary international search and international preliminary examination. This process is roughly 30 months long. 
  3. Enter the national phase. During this process, you have to process the application including filing the national patent, examination and finally the grant of patent protection. 

Key Points

  1. There are two options when it comes to gaining international protection for a patent.
    1. Paris Convention
    2. Patent Cooperation Treaty 
  2. The PCT extends the benefits of the Paris Convention, whilst allowing for additional time to determine which nations or regions you want to gain protection in. However, you might want to consider a Paris Convention Application if you know you only want protection in 2-3 countries and don’t have time/money constraints. 

Contact our IP lawyers if you need help with patents – either nationally or internationally.

About Jayfer Joy

Jayfer JoyJayfer is a paralegal with OpenLegal. His legal areas of focus include conveyancing, intellectual property, and commercial litigation. Jayfer is also passionate about podcasts in the legal space.

About Philip Evangelou

phillipPhil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.