What happens to my international patent application before it enters the national phase in the United States?

What happens to my international patent application before it enters the national phase in the United States?

A patent is a set of exclusive rights granted to the inventor of an invention by a government.  When an inventor is granted a patent, the inventor can prevent other people from making selling or using the invention.  Patents are territorial.  A patent granted in one country is typically not enforceable in another country.  An inventor must file a patent application in every country he wants to get a patent.

Filing a patent in multiple countries was a time consuming and expensive process.  Conflicting laws in different countries could also cause inventors problems.  The Patent Cooperation Treaty is an international patent law treaty, which attempts to make it easier for inventors to file patent applications in multiple countries. The Patent Cooperation Treaty provides a unified procedure for filing patent applications in each of the countries which have adopted the treaty.  The patent cooperation treaty allows in inventor to file a patent application in the inventors home country, have the patentablity of the original application be checked internationally and then have that same application forwarded to many different countries’s patent offices.

The United States is a country that many inventors would like to be granted a patent.  The Patent Cooperation Treaty makes the process of getting a patent in the United States much easier for inventors who do not live in the Untied States, if the inventors home country has adopted the Patent Cooperation Treaty.  The People’s Republic of China adopted the treaty in 1994 so citizens of the People Republic of China can use this procedure.

An inventor who does not live in the United States can file a patent application in their home country, if their home country has adopted The Patent Cooperation Treaty.  If the patent application the inventor filed in his home country complies with the requirements of the Patent Cooperation Treaty, that application can be converted into a international patent application up to 12 months after that patent application was filed.  The purpose of the 12 month period is to give inventors an opportunity to consider changing a home country application to an international patent application.  An inventor could file an international patent application with their home country and skip the need to convert their home country patent application to a international patent application later.  How to file a patent application is a strategic decision that should be made with the assistance of an experienced patent attorney.

Once the international patent application is complete, it is forwarded to the International Searching Authority.   The International Searching Authority can be different organizations depending on the inventor’s home nation.  The State Intellectual Property Office of the People’s Republic of China performs that function for citizens of its nation.  Once the International Searching Authority completes its work, the inventor will be given a search report and written opinion about the patentability of the invention.  The search report will be issued within 16 months of the original filing date of the patent application.

18 months after the original filing date of the patent application the patent application and the findings of the International Searching Authority will be published.

At this point the inventor has a few options.  The inventor can request a supplementary international search, which would give an inventor a more detailed report about prior art. The inventor can also request International Preliminary Examination of the patent application.  Or the inventor can skip those two options and enter the national phase in the United States by forwarding a copy of the patent application, with all required material, to the United States Patent and Trademark Office.

Once the inventor’s international patent application has been forwarded to United States Patent and Trademark Office it will go through the patent prosecution process the same as a domestically filed patent application.

If you have questions or comments about this blog please email the authors: admin@uspatentlaw.cn