IP Legal Services files and prosecutes patent applications worldwide. An applicant who has filed a patent application for an invention in the US may wish to file a corresponding foreign patent for the same invention. Our law firm can assist you in the filing of corresponding foreign patent applications through our attorney associates in the countries where the foreign application is to be filed. IP Legal Services has filed several hundred (100) PCT applications to date.
An agreement known as the Patent Cooperation Treaty (PCT) allows a US patent applicant to file an international patent application with the World Intellectual Property Council (WIPO), Geneva, Switzerland within 12 months of the first filed application and obtain the priority date in all the member countries of the PCT if the corresponding foreign application is filed within a period of approximately 30 months (time limit varies depending on the country of filing) from the first filed application. If the patent applicant does not file for a PCT application within 12 months of the priority date of the patent application, the patent applicant must apply for a patent in each of the foreign country within 12 months of the priority date of the first filed patent application under the Paris Convention.
The approximately 30 month period gives the patent applicant time to evaluate the commercial viability of the invention in the foreign country where he wishes to file the patent application. Filing a PCT application allows the applicant to defer the filing of counterpart foreign patent applications (and, therefore defer the high filing costs involved in such filings) by up to 30 months from the first filed patent application.
About 96 countries including virtually all industrialized countries (notable exceptions being Taiwan, Pakistan) are members of WIPO.
Patent rights are territorial, i.e., patent rights accrue only in the country where the patent application is filed. For example, if you want patent protection in Korea, China, Canada and Germany, you have to file a patent application in the patent office of each of these countries. However, an applicant can get patent protection in all the 32 European Community (EC) countries by the filing of only one (1) patent application with the European Patent Office, Munich, Germany.
The filing procedure that applicants normally follow to file corresponding foreign patent application (referred to as a "national phase application") is:
First, file the patent application in any country (typically the country in which the applicant is domiciled)
Second, file a PCT application with WIPO within 12 months of the first filed application
Third, file counterpart foreign applications (referred to as a "national phase application") in the PCT member countries in which you (the applicant) wish to obtain patent protection within 30 months from the first filed patent application.
The PCT application filing fee for a PCT application is approximately $2600 (payable to WIPO). In addition, IP Legal Services charges a professional fee of $1000 for filing the PCT application, docketing, and reviewing and forwarding all PCT papers to our clients and setting uo the foreign patent application docket.
For more information on the PCT visit:
PCT Legal Administration Home Page
WIPO PCT Systems Home Page
Corresponding patent filed in foreign countries have to comply with the patent rules and regulations of that foreign country. For example, patent laws of some countries require that the invention cannot be publicly disclosed before the patent application filing date.
IP Legal Services is not responsible for the work or product of any foreign firm through whom we file foreign applications and will not accept responsibility for any negligence or transgression on the part of any foreign firm even if recommended by IP Legal Services.