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Patent Applications

Patent filing strategy

The TTO will file first for a U.S. provisional patent application. This offers a 12-month grace period to decide whether to go for a U.S. regular patent application and a PCT application (Patent Cooperation Treaty), which serves as international notification of a patent application. It currently takes an average of two to three years for a patent to be issued in the U.S., but this can vary widely.

For U.S. regular patent application: After filing a U.S. provisional application, a decision has to be made within 12 months whether to file a regular patent application. Good reasons are needed for doing so, in particular a licensee willing to finance the patent prosecution.

The U.S. application will be published 18 months from the filing date of the U.S. provisional application.

For PCT patent application: This is generally filed within 12 months from the U.S. application (either provisional or regular) has been submitted, usually using the same specifications. It must then be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

Note that some regions and countries are not signatories to the Patent Cooperation Treaty, such as Taiwan, Thailand and Saudi Arabia. Details can be found at the World Intellectual Property Organization. If an inventor wishes to extend the patent applications to a non-contracting state, the TTO should be informed before the U.S. regular application is filed.