Do I Need to Have an Invention Ready Before Filing for an International Patent Application?

You have the right to file an international patent application if you are a national or resident of a PCT Contracting State. If there are several named applicants, only one of them must meet this requirement. By filing an international patent application under the PCT, applicants can simultaneously apply for the protection of an invention in a large number of countries. Before filing for an international patent application, it is essential to determine if your invention is patentable.

As mentioned before, you begin to lose important patent rights when you make a public disclosure, public use or offer to sell your technology. Therefore, if you're going to submit a presentation at a public event where a recording can be publicly released, you'll want to file a patent application first, as it would be considered public disclosure. However, most investor proposals are submitted behind closed doors, where there is at least an implicit confidentiality that means that these disclosures do not lose patent rights. In any case, it is essential to file a patent application before meeting with investors.

Given these factors for filing and not filing a patent application, the best strategy for startups is usually to wait as long as possible to file their first patent application, but be sure to file it before a first public disclosure, public use, sale offer, or meeting with potential investors. If your invention does not appear patentable at the end of the international phase, you can abandon the PCT application and you will have saved the costs you would have otherwise incurred by applying directly for protection in foreign countries, appointing local patent agents in each foreign country, preparing the necessary translations and paying domestic fees. Once you have entered the national phase, interested national or regional patent offices begin the process of determining whether they will grant you a patent. This additional time can be useful for evaluating the possibilities of obtaining patents and exploiting your invention commercially in countries where you plan to obtain patent protection, and to evaluate both the technical value of your invention and the continuing need for protection in those countries. This publication explains legal and business considerations about when to start the patent process and how to draw up a patent plan for your specific business.

The deadline to start filing foreign patent applications is also one year from the filing of the initial provisional patent application, and foreign applications can be even more expensive than those in the United States. However, some countries establish “grace periods” under which, if an applicant files a patent application within a certain time after the publication of the invention, the previous disclosure is not considered a state of the art of the patent application. The effect of claiming the priority of a previous patent application is that a patent will not be invalidated by any act performed in the interim, such as the filing of another application, the publication or the sale of the invention. They may include the fees for the translation of your application, the filing fees of the national (or regional) Office and the fees for hiring the services of local patent agents or attorneys. Consequently, it is important to remember that the first rule of patent planning is to at least file an application before making any public disclosure, public use, or offer to sell the technology you want to patent. Patents are territorial in nature and there is no single system that allows applicants to obtain a patent granted worldwide. Maintenance fees are required to keep a patent in effect longer than 4, 8 and 12 years after the date of issue of utility patents and to reissue them.

For example, I have seen several early-stage companies that initially lost foreign patent rights because they considered them unnecessary, and then lost the opportunity to hire important investors or collaborators because the protection of foreign patents was fundamental to a possible agreement. For example, assuming that you first file an application for a provisional patent (which is also usually the best option for new companies), this begins to elapse a year before your non-provisional patent application is filed, and the examination at the USPTO begins a year or two later. Unfortunately, there is no way to postpone strict patent terms, and the lack of sufficient capital to cover costs means that patent rights can be completely lost, technology is not adequately protected, or critical funds are diverted for other important business purposes. The IPRP (Chapter II) provided to you, to WIPO and to national (or regional) patent offices consists of an opinion on compliance with international patentability criteria for each of the applications that have been sought.

Forrest Kemmerer
Forrest Kemmerer

Hipster-friendly internet trailblazer. Music specialist. Incurable bacon buff. Lifelong social media lover. Certified coffee junkie. Hardcore explorer.

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