In the previous part of this blog series, we concentrated on strategic approach to foreign filing decisions. Fortunately, not every geographical filing decision must be made immediately. This second part observes ways to postpone and iteratively assess the final decision on target countries.
The patent systems worldwide are structured so that applicants do not generally need to make all geographical filing decisions at the very beginning of the patenting process. Under the Paris Convention of 1883, after filing the first patent application, the applicant generally has a 12-month priority period during which corresponding applications can be filed in other countries with the benefit of the priority date established by the first application.
This deadline is important. If the priority period is missed, obtaining effective patent protection abroad may become difficult or, in some circumstances, impossible. Later-filed applications will generally no longer benefit from the original priority date, and intervening disclosures or publications may affect patentability. Limited remedies may be available in certain circumstances, but they should not be relied upon as part of the filing strategy.
If more time is needed before making the final geographical filing decisions, a commonly used option is to file an international application under the Patent Cooperation Treaty (PCT), either as a first application or within the 12-month priority period from the first application. The PCT route can extend the period for deciding where to pursue patent protection to approximately 30 months from the earliest priority date, depending on the jurisdiction. Observing the applicable national or regional phase entry deadline at the end of this period is just as important as observing the 12-month priority deadline.
A PCT application does not, however, create an “international patent” or automatically provide patent protection throughout the world. Instead, the PCT can be viewed as a decision-deferral tool, not merely a filing route: it preserves the possibility of pursuing protection in numerous countries and regions while providing the applicant additional time to gather commercial and strategic information before making significant and potentially irreversible expenditure decisions on national or regional filings.
The priority year and, where the PCT route is used, the subsequent international phase should not be regarded simply as periods in which filing decisions are postponed. They provide a strategic window in which the company can reduce uncertainty and improve the quality of its eventual foreign filing decisions.
Companies should use the information accumulated during the priority year and PCT period to narrow, refine and prioritize the final geographical scope of protection, ensuring that it remains aligned with their evolving business and competitive priorities.
During the 12-month priority period, the company should actively re-evaluate the assumptions that existed when the first patent application was filed. Over the course of that year, more information may become available about customer demand, market expansion, competitors, manufacturing and supply chains, financing, partnerships and the commercial importance of the invention.
Depending on the patent office and filing route, the applicant may also receive a search report and an initial assessment of patentability during the priority year, providing further information on the strength and scope of the patent position before the next foreign filing decision is made. For example, the European Patent Office (EPO) as well as certain national patent offices aim to provide the initial opinion on patentability for first filings within the priority year.
The company may therefore ask, for example:
These developments may confirm the original geographical strategy, point to more valuable jurisdictions, or suggest that the invention is less commercially valuable than initially expected.
If a PCT application is being considered toward the end of the priority year, this is a natural point for a more structured review.
The company should reassess whether the invention still justifies continued international patent investment and whether the PCT route remains aligned with the company’s business plans. It may also be appropriate to review whether developments during the priority year should be reflected in the patent strategy, for example through additional patent filings covering improvements or further inventions, or by revisiting the scope of the claims in the current application.
The decision to file a PCT application should therefore not be treated as an automatic continuation of the first filing. It is an opportunity to confirm that preserving a broad range of foreign filing options remains commercially justified.
The PCT phase can provide further time to observe how the technology, market and business develop before substantial national and regional filing costs are incurred. In addition to commercial developments, the applicant will normally receive an international search report and written opinion, providing an initial indication of relevant prior art and whether the claimed invention appears to meet requirements such as novelty and inventive step. Although these findings are preliminary and do not bind national or regional patent offices, they can provide useful information when deciding how strongly to pursue the application and where further investment may be justified. The commercial benefit of the PCT route is therefore not simply more time, but the opportunity to make important expenditure decisions with more information.
Before entering the national or regional phases, the company should conduct another country-by-country review. By this stage, the commercial landscape may be substantially clearer than it was when the first application was filed.
The built-in timing should consequently be viewed not merely as a procedural feature of the patent system, but as a strategic mechanism for progressively improving foreign filing decisions. As uncertainty decreases, the company can direct its patent investment toward the jurisdictions that best reflect its evolving commercial, competitive and IP priorities.
Berggren's patent professionals assist companies in evaluating foreign filing options and developing international patent strategies based on their technologies, target markets, competitive environment and business objectives.