Are you a LatAm based entrepreneur and would like to protect an invention?

Patents give inventors exclusive rights to exclude others from making, using, selling and/or importing/distributing a claimed invention in a given country/jurisdiction for a certain period of time. When filing a patent application, there are two options worth exploring:

• Filing an international Patent Cooperation Treaty (PCT) application  
• Filing patent applications directly in any country(ies) of choice

To learn about how to create value by developing intellectual property, you can read Brown Rudnick’s article on that topic by clicking here.

International PCT application

When it comes to seeking protection by applying for a patent, an international PCT application offers a streamlined approach for establishing worldwide protection of an invention. The main advantage of pursuing a PCT application is that the process allows inventors to submit a single patent application that is recognized by most of the industrialized countries of the world (referred to as PCT Member States) and thereby preserves the inventors’ right to then pursue patent protection at a later date in those PCT Member States. 

The PCT application is examined by an international searching authority (ISA) selected by the inventor, which works with the inventor to confirm that the necessary requirements are met and generates a nonbinding international search report (ISR) and a search opinion on whether the invention should be granted as is. The PCT application itself is never granted and does not itself provide patent protection. Rather, the PCT application provides a streamlined, internationally agreed upon manner of filing applications in each PCT Member State that are enforceable once examined and granted by the corresponding patent office of a given PCT Member state. A positive ISR and search opinion can also be instrumental in efficient prosecution of a patent application subsequently filed in the selected PCT Member States and their respective patent offices. 

The PCT application stays “pending” for 30 months from the earliest priority it claims (for example, if claiming priority to a provisional application in the U.S. filed with the U.S. Patent and Trademark Office (USPTO), the PCT application has a priority date of the provisional application filing date, as described above). Like with the provisional application, this provides an inventor with additional time to decide whether and where to proceed with the patent application. For example, an inventor filing a provisional application in the U.S. with the USPTO can wait 12 months to file a PCT application and will then have an additional 18 months to make a decision on where to file for patent protection in any of the PCT Member States.

All countries in LatAm are currently PCT Member States except Argentina, Bolivia, Guyana, Paraguay, Uruguay (expected to become a PCT Member State in 2024), Suriname and Venezuela.

Patent application in country(ies) of choice

Additionally, or alternatively, an inventor may file patent applications directly in any country of choice, without first filing a PCT application or alongside the filing of a PCT application. This is a necessary step when pursuing patent protection in countries that are not PCT Member States. Filing a patent application in a specific country of choice (as opposed to first filing a PCT application) results in that patent application undergoing examination sooner and thus can result in obtaining a granted patent in an important jurisdiction sooner, without using the one-year period provided by a provisional application or the 30-month period provided by a PCT application. Moreover, a granted patent in certain jurisdictions, including the U.S., can be used to expedite examination of corresponding applications in partner jurisdictions. For example, as of 2024, an issued U.S. patent can be used to expedite examination in Australia, Brazil, Canada, Chile, China, Colombia, Europe, Israel, Japan, Korea, Mexico, New Zealand, Peru, Singapore and the Republic of China (Taiwan). As a result, an inventor may consider filing a U.S. application and PCT application simultaneously, with the goal of having the U.S. patent issue into a granted patent and then utilize that granted U.S. patent to expedite examination of any national stage patent applications filed in PCT Member States (from the PCT application).

If a patent application is filed in any LatAm country, the filing date can be claimed as priority date within one year of its filing to file a subsequent PCT and/or national applications in other jurisdictions claiming priority to the previously filed application. To learn about the advantages of filing a provisional patent application in the U.S., you can read Brown Rudnick’s article on that topic by clicking here.

If you are interested in learning about how to leverage patent applications to protect your inventions globally and cost-effectively, please let us know. Our team of international lawyers, many of whom are also admitted to practice law in Latin American countries, can help create a tailor-made strategy to protect your invention.