Patent Primer

How do I obtain international patent protection?

There is no such thing as a “worldwide patent”. If an applicant seeks patent protection internationally, separate patent applications must be filed in each country of interest. There are two international treaties, the Paris Convention and the Patent Cooperation Treaty (“PCT”) that help to streamline the patent application filing process and can allow some patenting costs to be deferred.

Paris Convention Priority Right – One year to Decide Where to Patent

Most foreign countries have signed the Paris Convention, which allows a patent applicant to claim priority to a patent application filed within the previous year. In most countries, it is sufficient to file within one year of the date on which the earliest application (which can be a provisional patent application) was filed, provided that the earliest application was filed before any public disclosure of the invention anywhere in the world. A few countries are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of patent rights there.

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PCT – Filing a Single Patent Application for Many Countries

The PCT provides a simplified procedure enabling applicants to obtain patent protection in a large number of countries. A single English-language PCT application may be filed. That application can optionally claim priority to a previously filed application, e.g. a provisional patent application. The PCT application is then assessed as to its potential patentability on a preliminary basis. At the request of the applicant, a further round of international preliminary examination may be carried out if the applicant disagrees with the initial assessment of patentability. A favourable patentability opinion can assist the applicant in the further processing of the application in those countries in which the applicant wishes to obtain patent protection, and may be used to accelerate examination of applications in certain countries under the Patent Prosecution Highway program.

A PCT application provides more time for an applicant to decide whether to seek patent protection in countries of interest. A PCT application provides thirty months from the earliest priority date of the application for the applicant to decide the countries in which the application should be pursued. At this stage, the application must enter the national phase for further examination for patentability under national law in each country in which protection is desired.


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European Patents – Another Streamlined Filing Process

A single English-language application can be filed at the European Patent Office (“EPO”), designating a number of countries that are parties to the European Patent Convention (“EPC”).  The countries that are members of the EPC are not the same as countries that are members of the European Union, so care must be taken in confirming that all jurisdictions of interest are covered by this filing. The EPO examines the application and, if the applicant is successful, grants a European patent. The European patent rights must then be perfected in each country of interest through a procedure called validation, which can include filing translations of all or part of the granted patent into the local language.

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