WIPO patent filing vs US patent?

Question

After doing a bit of research on the different types of patents that are available, and what it would cost to get patents in multiple countries, it is a mystery to me why anyone would bother with getting specifically and only a United States patent.

Most patents are only good for the specific country where it is issued, and this is the case with US patent. It does nothing to protect you from people using your patented technology in other countries. It only provides defense for the United States.

However the World Intellectual Property Organization (WIPO) provides a way to do a single filing that applies in a huge number of 152 countries (currently) simultaneously:

• http://www.wipo.int/pct/en/

This then leaves me with the question of why most anyone would bother at all with merely filing a US patent. It seems to have no purpose for general filing, and should only be done in very specific and uncommon conditions.... which I can’t even come up with, if a WIPO multi-country filing can already fulfill those functions.

Answer 1

The answer is money. The single WIPO/PCT application (that, itself, costs more than a U.S. application) just starts an application in 140 some countries. To actually proceed in each location costs more in fees and must be separately prosecuted by a patent attorney in each location, under the laws and rules of each location.

The U.S. is a huge percent of the world market for many types of products. If you can control the use, sale, offer for sale, manufacturing, and importing into the U.S. you might be able to make a lot of money in relation to your patenting budget. Of course, many inventors file in one or more other locations besides the U.S. If you plan to file in several foreign places, the WIPO/PCT path can make sense. It is also possible to file in specific countries and regions without the PCT process.

Answer 2

The PCT application is not an application for a 'world patent'.

But some basics first. If you file a patent application in any PCT-country, you have 12 months to file other applications in (the same or) other PCT-countries claiming priority to the first application. You can do that in each country without the PCT application. However, this way you need to pay for all the translations and attorney fees in the different countries upfront and need to organize all that in 12 months, possibly before even having a report on patentability.

The PCT-application allows you to defer the filing in the other countries to 30 months (with some exceptions where its 20 months or 31 etc.). The PCT-application is basically a prolongation of the 12 months. At the end of the 30 months (12 + 18 not 12 + 30) you need to file (enter the national phase) in each designated country separately.

Basically, the PCT application is a way to pay less money upfront, get an international search report and maybe more business information, before filing in the countries. All in all, you do pay more money this way if you decide to file in the same countries. But you pay the big chunk (translation costs) later.

Our clients for example mostly wait for the german search report (which often issues in about 11 months) before going PCT and then for the international search report before deciding if they want to nationalize and where.

Answer 3

To clarify one point: there is no such thing as "filing a patent." One applies for a patent by filing a patent application. A patent issues from the application if and only if it meets legal requirements including novelty and non-obviousness in view of the prior art (which includes subject matter in the relevant field that was publicly known prior to the filing of the application). The application proceeds through "prosecution" during which a technically knowledgeable examiner reviews the application and the prior art, informs the applicant of reasons why the application's claims (sentences that specifically delineate the scope of the invention for which the applicant seeks patent protection) may or may not issue, and the applicant's representative files responses to persuade the examiner on patentability and/or revise the claims. As the other answers point out, applications are examined individually in each jurisdiction. The European Patent Office issues patents that are valid and enforceable in certain countries in Europe, so one need not go through each of France, Spain, Italy etc. individually to get patent protection there, but generally one needs to proceed in each jurisdiction in order to get protection in that jurisdiction.