Ch8. International Patent Filing — PCT, Paris Convention & Global Strategy

Territoriality and the Need for International Filing

Territoriality Principle:
A US patent is enforceable only within the United States
Protection in other countries requires separate applications in each country

International Filing Pathways:
Paris Convention route: file directly in each country within 12 months
PCT route: file a single international application covering ~157 member states

Cost Considerations:
Each national filing incurs translation costs, government fees, and local
patent agent fees — easily $5,000–$20,000+ per country per application
Country selection strategy is therefore a critical IP management decision
(cf. $50K–$100K+ total for a major PCT national-phase program)

Paris Convention Priority (35 USC § 119)

Paris Convention Priority Right:
If you file a patent application in one Paris Convention country,
you may file in any other convention country within 12 months
and claim the first filing date (priority date) as your effective filing date

Effect:
Any prior art that first became public AFTER your priority date
cannot be used against your later-filed foreign applications

Procedure:
Claim priority in the later application + submit certified priority document
Priority claim must be made at the time of filing (or within the rules of each country)

Priority Periods:
Patents and Utility Models: 12 months from first filing
Trademarks and Design Patents: 6 months from first filing

PCT Filing System

PCT (Patent Cooperation Treaty):
Administered by WIPO (World Intellectual Property Organization)
A single international application establishes a filing date in all PCT member states

PCT Phases:
International Phase:
  → File one international application (in one language, one set of fees)
  → International Searching Authority (ISA) issues International Search Report (ISR)
  → Optional: International Preliminary Examination (IPEA)

National Phase Entry:
  → File translations, pay national fees in each desired country
  → Standard deadline: 30 months from priority date
  → Some countries allow longer deadlines (e.g., US: 30 months)

Key Benefits:
Priority date secured worldwide with one filing
ISR provides early patentability intelligence
30-month window defers national filing costs
PCT filing signals IP portfolio value to investors

International Filing Strategy

Country Selection Criteria:
Primary markets (where you sell products)
Competitor home countries (where you need blocking patents)
Manufacturing locations (prevent contract manufacturing infringement)

US Patent Specifics:
Provisional application (35 USC § 111(b)):
  → 12-month pendency, low cost, establishes priority date
  → Must convert to non-provisional within 12 months
AIA: First-inventor-to-file since March 16, 2013
Design patents: file separately under § 171

European Patent Office (EPO):
Single application covering up to 44 EPC member states
Validated in desired countries after grant (translation + national fees)
Unitary Patent (UP): single validation covers most EU member states

China (CNIPA):
Invention patent · Utility Model · Design (three tracks)
File domestic Chinese application before filing PCT if technology
originated in China (Chinese domestic security review requirement)

Key Concept Cards

Paris Convention Priority = 12 Months from First Filing ★★★★★ : File in any convention country within 12 months and claim the priority date. Memory hook: Paris = 12 months

PCT National Phase Deadline = 30 Months from Priority Date ★★★★★ : 30 months to decide which countries to enter; ISR assists the decision. Memory hook: PCT = 30 months

Trademark and Design Priority = 6 Months (Not 12) ★★★★☆ : Paris Convention gives trademark and design applicants only 6 months. Memory hook: TM/Design = 6 months

Practice Questions

Q. Why would a startup choose the PCT route over direct Paris Convention filing?

Cost timing: the PCT’s 30-month window lets the company defer each country’s $5,000–$ 20,000 filing cost until it knows which markets matter commercially. The International Search Report, typically available within 18 months, gives an early read on patentability before major national-phase investments. A PCT filing also enhances the company’s IP portfolio value when seeking investment — it signals global patent coverage in progress. Downside: the PCT filing itself costs roughly $3,000–$ 5,000 in government fees (plus agent fees), and ultimately does not reduce total costs if you enter many countries anyway — it only defers and structures the decision.

Q. What is the difference between the Paris Convention and PCT approaches?

Paris Convention: you file directly in each country individually within 12 months of your first filing, claiming the priority date. Each national filing incurs its costs immediately. Best for a limited number of key countries. PCT: one international application covers all member states; national-phase entry costs are deferred to 30 months. Best for broad international coverage when country selection is uncertain. Paris Convention costs: incurred immediately, country by country. PCT costs: initial PCT fee now, national-phase fees later and selectively. For large multi-country programs (5+ countries), PCT is almost always more efficient.