Need to Protect IP Internationally? File a PCT Application

You have contracts with vendors and employees. You have trade secrets agreements and domestic patent protections. You're even pursing individual foreign patents. But, if you're not filing an application under the Patent Cooperation Treaty, you're overlooking an important tool to protect your company's intellectual property internationally.

The Patent Cooperation Treaty creates a unified procedure for patenting inventions internationally. And while a PCT application doesn't actually result in an international patent, it does have numerous benefits, including reducing patent examination work and giving you an extra 18 months to file for patent protection in foreign jurisdictions.

The Benefits of a PCT Application

The Patent Cooperation Treaty covers most of the world's industrialized countries, from Germany to India to Cuba. The main benefit of the PCT is the creation of the "international patent application." This allows applicants to delay filing in individual foreign countries, while still keeping their technology protected.

A PCT application carries several benefits:

• Allows you to delay filing by up to 18 months more than allowed in foreign procedures
• Guarantees that your application cannot be rejected on formal grounds during national processing
• Creates an international search report and written opinion regarding patentability
• Reduces search and examination work in patent offices

PCT Application Procedure

If you want to take advantage of the PCT, the first step is filing an international application, or PCT application, with your appropriate receiving office. Once the application is submitted, an International Search Authority researches relevant prior art. That results in a written opinion regarding patentability, which is initially confidential.

Though not binding on national patent offices, the report gives applicants a fair look at the prospects of their patent. (The European Patent Office is considered the best, but also costs the most. The Korean Intellectual Property Office is often considered a competent, and much cheaper, alternative.)

With a patent report in hand, you can go forward to file for individual protection in foreign countries. The report means that much of your research will have been done for you already. And while the PCT application was being processed, you've protected your intellectual property for a year and half, allowing you time to continue to set up foreign partnerships, gain access to markets, and research foreign jurisdictions -- all for just a few thousand dollars.

Related Resources:

• Filing a New International Application Under the PCT (USPTO)
• Tips for Drafting an International Arbitration Clause (FindLaw's In House)
• New Report Surveys IP Litigation Trends Over the Past Six Years (FindLaw's In House)
• What You Need to Know About the TPP (FindLaw's In House)