International Patent Process Stages

Securing international patent protection involves a strategic process that unfolds in multiple stages. This guide provides a comprehensive overview of the entire international patent journey from initial filing through to grant and maintenance.

The Four Stages of the International Patent Process

The international patent process can be broken down into four main stages, each with its own strategic considerations, timing requirements, and costs.

Stage 1: Provisional Patent Application

The first stage in the patent process is filing a provisional patent application, which secures an international filing date (priority date) for your invention.

Key benefits of a provisional patent application:

• Establishes a priority date for your invention worldwide
• Provides 12 months to develop your invention further before committing to more expensive applications
• Allows you to use "patent pending" in your marketing materials
• Gives you time to assess commercial potential before significant investment
• Relatively low cost compared to later stages

It's crucial to file your provisional patent application before publicly disclosing your invention, as public disclosure can invalidate your ability to obtain patent protection in most countries.

During the 12-month period following your provisional filing, you can continue to develop and refine your invention. Any improvements can be incorporated into the complete patent application filed at Stage 3.

Stage 2: International Novelty Search (Optional)

The second stage, which is optional but highly recommended, is to conduct an International Novelty Search. This search helps identify relevant prior art that might affect the patentability of your invention.

Benefits of an International Novelty Search:

• Identifies existing patents and publications that might affect patentability
• Provides an early assessment of the likely scope of patent protection
• Helps refine your claims before filing more expensive applications
• May indicate whether proceeding with the patent process is commercially viable
• Can reduce costs in later stages by addressing potential objections early

Based on the search results, your patent attorney can advise on the potential scope of patent protection and strategies for proceeding to the next stages.

Stage 3: PCT International Patent Application

The third stage involves filing a PCT (Patent Cooperation Treaty) international patent application. This must be done within 12 months of your provisional application filing date.

What is a PCT international patent application?

A PCT application extends your priority rights to 157 member states. It provides a unified filing process that delays the need to file separate national applications, giving you up to 30/31 months from your priority date to decide in which countries you want protection.

When is a PCT application most beneficial?

• When you're uncertain about the final list of countries for protection
• When seeking potential licensees (who often value the flexibility to choose countries)
• To defer the costs associated with filing in multiple countries
• To have your application examined centrally, streamlining later national processes

The PCT process includes an International Search and Written Opinion on the patentability of your invention. If objections are raised, you can respond with amendments and arguments through a Demand for International Preliminary Examination (IPE).

It's important to understand that a PCT application does not result in an "international patent." You must still enter the national phase in your countries of interest to obtain patent protection there.

Alternative to PCT: Direct National Filings

Instead of filing a PCT application, you can file patent applications directly in selected countries within 12 months of your priority date. This approach is typically recommended only if you want protection in a small number of countries (three or less).

Stage 4: National Phase Patent Applications

The fourth and final stage involves filing national or regional patent applications in the specific countries where you want protection.

Filing deadlines:

• 30 or 31 months after the priority date for national phase entries following a PCT application
• 12 months after the priority date for direct national applications (without a PCT)

Strategies for selecting countries:

1. Your largest markets: Particularly important where your product could be manufactured anywhere
2. Manufacturing countries: Where competitors would likely manufacture an infringing product
3. Your manufacturing locations: To prevent unauthorized production by your manufacturers
4. Home market: Usually the most accessible market commercially
5. Pilot markets: Enhanced credibility in markets where you're starting commercialization
6. United States: Largest consumer market with excellent value for protection
7. Europe: Single application covers multiple countries in the second-largest consumer region
8. China: Largest population with rapidly growing middle class and improving IP enforcement
9. Infringement locations: Countries where your patent is being infringed
10. Future markets: Consider potential valuable markets in 5-10 years, given patents' 20-year lifespan

Patent Examination, Grant and Renewal

After filing national phase applications, each application undergoes examination according to the respective country's patent laws. This typically involves:

1. Formal examination to ensure compliance with filing requirements
2. Substantive examination of patentability (novelty, inventive step, industrial applicability)
3. Responding to office actions and amending claims as necessary
4. Acceptance/allowance of the application
5. Payment of grant fees
6. Regular payment of renewal fees to maintain the patent (typically annually)

Your granted patent provides exclusive rights for up to 20 years from the international filing date, subject to payment of renewal fees.

Commercial Benefits of Patent Protection

1. Licensing opportunities: Patents enable you to license or sell your technology
2. Competitive advantage: Patents are powerful tools for dissuading or stopping competition
3. Business valuation: Patents may increase your business value when recorded on your balance sheet
4. Investment attraction: Patents provide investors with reassurance about your competitive moat

Next Steps

If you're considering international patent protection for your invention, we recommend speaking with a commercially focused patent attorney to develop a strategy tailored to your business goals and budget.

Click through to learn more about the specific stages of the patent process:

• Stage 1: Provisional Patent Applications
• Stage 2: International Patent Search
• Stage 3: PCT International Patent Applications
• Stage 4: National Phase Patent Applications