Foreign patent filing lets inventors and companies seek protection for an invention outside Israel. A patent is territorial. A patent granted only in Israel limits both the scope of protection and the potential market. Foreign patent filing does not have to happen together with the first filing, however.
With informed use of international treaties, you can postpone the costs of filing abroad. You keep the right to file in the target countries you choose. To stop competitors in a given country, you ultimately need an application that leads to protection there. Postponing those costs buys time. The inventor or company can raise capital, test the business potential and hear from customers first.
When to Start Foreign Patent Filing
The right timing depends on the goals of the applicant and the invention. We therefore tailor the strategy to each inventor and company. In many cases, however, there is both a business and a legal advantage in postponing filing abroad.
Many inventors first file a patent application in Israel. This first filing often costs less. At that stage there are no costs for foreign associates or translations. From that filing date, the applicant has 12 months to file abroad and claim the Israeli priority date under the Paris Convention.
For example, suppose the applicant files in the United States within the 12 months. The Israeli filing date is then the relevant priority date in the US as well. Suppose a competitor filed a similar US application in the meantime. The applicant who filed first in Israel can still rely on the earlier Israeli date.
Foreign Patent Filing Routes: Paris Convention and PCT
Before the 12 months end, the applicant can choose between two main routes:
- Direct national filings. Filing separate applications in specific target countries, each claiming the Israeli priority date.
- An international application under the PCT. One application that has legal effect in all PCT Contracting States. For most offices, you must enter the national phase before the end of the 30th month from the priority date. Some national laws allow a later deadline.
The PCT does not create an “international patent”. Each national or regional patent office still decides whether to grant a patent in the national phase. Combined, the two treaties can postpone most foreign costs until around 30 months from the first filing. Meanwhile, you can raise capital, commercialize the invention and test its success in Israel and abroad.
Where to File for Patent Registration Abroad
We can file patents for our clients in almost any country through local associates. Many applicants file in the United States, since in many cases it is a central market for their product. We choose other target countries according to markets, manufacturing locations and competitors, and review the list for each invention.
The specification we prepare for our clients is usually drafted in English from the outset. We then send the same wording we filed in Israel to our associate patent attorneys abroad, who file it in the target countries. Where a translation is required, the local associate translates the application into the local language, for example Chinese or German.
Another option is a regional application, such as a European application. It allows one filing procedure for several countries, but its disadvantages include, among others, a relatively high cost.
Frequently Asked Questions
Is there one international patent that covers the whole world?
No. A PCT application is an international application. However, national or regional offices grant the patents, each under its own law.
How long do I have to file abroad after filing in Israel?
Under the Paris Convention, you must file abroad within 12 months of the first filing to claim its priority date. Filing a PCT application within that period postpones national filings, in most offices, until 30 months from the priority date.
The above information is general and partial, and does not replace advice on each specific case. For the treaty rules, see the WIPO PCT frequently asked questions and the Paris Convention text on WIPO Lex. To discuss which countries fit your invention and when to file, call +972-3-9711013.