How to turn your provisional patent application into an international patent application

One of the many benefits of filing a US provisional patent application in the United States Patent and Trademark Office (USPTO) is that it can eventually turn into an international patent application recognized by most countries around the world.   Here's how it works:

A little history

Prior to the 1970's, if you wanted to protect your invention in multiple countries you would have to file a separate patent application in each country.  So an inventor in the United States may want to file a patent application in the USPTO, France, Germany, Australia, etc. to get patent coverage in all those countries.  This system made it very expensive upfront for inventors at a time when most were not sure if it was worth the money to invest in all of these expensive patent filings.  Governments realized this problem and started to work on a solution.

The Patent Cooperation Treaty (PCT)

I don't want to bore you with all the legislative details, but basically a bunch of important countries passed something called the Patent Cooperation Treaty (PCT) back in the 1970s.  Under this treaty, an inventor (or company) could file a single patent application called a "PCT Application" or an "International Patent Application" which would act as a placeholder buying the inventor 30 months (2.5 years) to decide which countries they want to file in.  Every major industrialized country is a part of the PCT.

Once the initial 30 months are over, the inventor (or company) must decide which specific countries they want patent coverage in and then file a "national stage" patent application in those countries.  This can get very expensive as each country has their own filing fees and some require expensive translation of the application into the language of that country.

How to turn your Provisional Patent Application into an International PCT Application

One of the benefits of the US Provisional Patent Application is that you can file a PCT Application that claims the benefit of the US provisional application.  This is just a fancy way of saying that you can link the two applications together.  This is important because if you file your provisional application on January 1, 2010 and your competitor files a patent application on the same invention on June 1, 2010 (6 months after you) you want to be able to use your January 1, 2010 filing date to block your competitor.  If done properly, your PCT application will get to use that earlier January 1, 2010 date even if your PCT application was filed January 1, 2011 because the two application can be linked.   Patent attorneys call this a priority claim or a priority chain and its a good idea to keep the chain linked as long as you can so that you can use the earliest filing date to prove your invention was filed first.

After you file your provisional patent application in the USPTO it will expire 1 year after you file it.  At the end of that first year, you can either let it die (go abandon) or file a non-provisional patent application.  That non-provisional application can be a PCT Application or just a plain US non-provisional application.  The PCT application is more expensive (a few thousand dollars) while the US only application is about $400 (for micro entities).

Inventors also like the 30 month waiting period that the PCT Application provides.  It may sound strange because I know many of you want to get through the patent process as fast as possible but many times you need those extra 30 months to make tweaks or improvements to your invention.  It also helps by delaying most of the major patent costs for a few years giving you more time to raise money and grow your business.

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