In the early stages of securing patent protection, it is common for inventors to focus on getting a patent in their home country. While that is an obvious first step, inventors should also consider pursuing patent protection in one or multiple foreign countries to ensure wider IP coverage. One way of obtaining patent protection in multiple countries is through the Patent Cooperation Treaty.

What is the PCT?

The Patent Cooperation Treaty, commonly referred to as the PCT, was signed in 1970 and provides inventors with a streamlined path toward foreign patent protection in more than 150 member countries. It's important to note that while a patent application filed under the PCT is known as a “PCT application” or an “international application,” there are no “international” patents. Instead, PCT applications are passed to individual countries or regional patent offices for examination, resulting in separate patents granted by each country or regional office.

Some examples of regional offices include the following:

• The European Patent Office (EPO) comprising 38 member states, including Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the UK.
• The African Regional Intellectual Property Organization (ARIPO) comprising 21 member states, including Botswana, Kingdom of Eswatini, The Gambia, Ghana, Kenya, Kingdom of Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Seychelles, Sierra Leone, Somalia, Sudan, Tanzania, Uganda, Zambia, and Zimbabwe.
• The African Intellectual Property Organization (Organisation Africaine de la Propriete Intellectualle or OAPI) comprising 17 predominantly French-speaking member states, including Benin, Burkina Faso, Cameroon, Central African Republic, Chad, the Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Tongo.
• The Association of Southeast Asian Nations Patent Examination Co-operation (ASPEC) comprising 9 member states, including Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Vietnam.

When considering foreign patent protection, inventors should consider which countries/regions would provide the most valuable protection. Important factors when determining where to seek IP protection include, but are not limited to, the following:

• What countries do you plan to market/sell your invention in?
• Where do you plan to manufacture?
• What is your overall IP budget?

Why Choose the PCT Route?

Before filing for foreign patent protection, there are many factors to consider, including whether or not to use the PCT. Alternatively, inventors can file patent applications directly in as many or as few countries/regional offices as they wish. Some common reasons to pursue foreign patent protection through the PCT include deferring costs and allowing for additional time to decide which specific countries/regional offices in which to obtain a patent.

Deferring costs may be especially important to start-ups and small inventors waiting for funding from investors, grants, etc. The initial PCT filing fees are considerably less than paying simultaneous filing fees in several countries/regional offices. Though the filing fees for each designated country/regional office must eventually be paid, starting with a PCT application filing allows an additional 18 months before these individual fees are due. The timing of PCT application filing, individual country/regional office designation, and the payment of fees will be discussed in greater detail in a future article.

How Gallium Law Can Help

The IP professionals at Gallium Law have significant experience with obtaining foreign patent protection, both through the PCT and through direct foreign application filings. Whether you have a global IP protection strategy in mind or you're just starting to consider pursuing foreign IP protection, we're ready to help you develop and implement strategies to maximize your IP. Please fill out this Contact Form or call us at 651-256-9480 to set up a meeting.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.