International Patent Applications

The International Patent Application is a great system for obtaining cost effective patent protection worldwide. Because it offers applicants the opportunity to keep their options open for a relatively long time (30 months from an original filing date), it is a popular choice for early stage companies or for new products where the geographical scope of business activities is still to be determined.

Called the PCT after the Patent Cooperation Treaty which established it, the International Patent Application is administered by the World Intellectual Property Organization. There is a centralised “International Phase” during which various aspects of the patent process are carried out centrally. Then, separate “national phase” applications need to be made for each country in which patent protection is required.

The procedures are complex, and normally when explaining them to people I use a timeline diagram.  This is fine as far as it goes but in order to understand the significance of each step I would like to suggest a different analogy, based on house building.

Initial Planning

First of all, before building can commence, the land needs to be assessed. Where I live, there are various old coal mines, so part of buying a house involves checking old coal mining records to make sure that there are no abandoned mines that might pose a subsidence risk. In the same way, before investing in a patent it is wise to carry out a prior art search. This can validate the novelty of an idea, or provide additional information that can influence how a patent is written.

Buying the Land

Provided no obstacles are found, then the plot of land has to be purchased. You need to be careful that the boundaries are well defined and that the size of the plot is large enough to meet your future needs. In the same way, a first patent application (filed say in the UK or the US) sets out parameters that will influence the final scope of protection that is achieved. It is important that an initial application is made as comprehensive as possible.   There is danger in filing something informal with a view to firming it up later on, and professional advice will be essential to make sure you do not do anything that prejudices your patent rights.

Planning Permission

After the plot has been bought, you have to obtain planning permission to build a house. The PCT covers 148 countries, so in this analogy filing a PCT is like obtaining planning permission to build up to 148 houses on your plot of land. The International Phase provides a search report (and an optional preliminary examination) which helps you plan the type of property that you are going to be able to build, that is, the scope of protection that you are likely to obtain.

Finalise Building Plans

Of course, obtaining planning permission is not the same as actually building the houses. At some point, you will need to decide how many properties you want to build. Filing PCT national phase applications is like laying the foundations for your properties. Just as a separate set of foundations must be laid for each property, a separate national phase application must be filed for each territory where patent protection is required. The analogy of course breaks down here because with a PCT you can only make this choice once. After the relevant national phase filing deadline has passed it is not possible to expand into other territories.


Then, after the foundations are laid there is the small matter of actually building the houses and making sure they meet building regulations. The houses may end up being designed to look slightly different from each other, or may have other differences that are necessary because of local geological or topological issues. The building of the houses and their checking against regulations is analogous to the individual national stage examination that is carried out by each territory.

The most important decision point in the PCT process is the national phase filings. This is also the biggest single cost point in the process, as filings have to be made pretty much at the same time for all territories. This is quite rightly an important focus and the price of national phase filings is scrutinised carefully.

However as we can see in this analogy this point is not the end of the process. It is only really laying the foundations for a global portfolio and the hard work of negotiating with national examiners still lies ahead.

It’s important of course to be cost efficient at the time of national phase filings. But of equal if not more importance is to effectively manage the process of national examination that follows. Before committing to a national phase filing it is important to understand what lies ahead and make sensible budget plans to allow for the many quirks and oddities of patent prosecution. It’s important that your patent attorney communicates with you and keeps you updated and informed of costs, and also is proactive to make the process efficient.

If you have any comments on this analogy (no analogy is perfect!) we would love to hear from you! Please feel free to comment below or get in touch via mail [at] scintilla-ip [dot] com.