Practice area: Patents & IP

OUTBOUND PCT ATTORNEY

The first step to file internationally for a US inventor is often a PCT application to access countries that are part of the PCT convention within 30 or 31 months (for most countries) of the earliest priority date.  Other countries that are not part of this convention are accessible within 12 months of the earlier priority date.  We can help you prepare and file a PCT application, as a first application or claiming priority to an earlier application filing within 12 months.  We help you select a receiving office and an international searching authority.

Once your PCT is filed, we work with local law firms ("foreign associates") to file national phase applications in the desired PCT convention member countries.  We can also file within 12 months of the priority application under Paris Convention for those applicants from non-PCT countries. 

If the International Search Report and Written Opinion are favorable and the patent prosecution highway (PCT-PPH) is available or if the same claims have been allowed by the USPTO or another country's patent office that has with a bilateral or multilateral treaty (Global PPH or IP5 PPH) with the desired country's patent office, the PPH can be used for quicker service.  The local patent offices do not have to follow or agree with the Written Opinion or other patent office. 

You can find an example listing of patent applications that Mr. Silver worked on at our patent listing page and client reviews on our patent page.  Did you know that we have a Request for Proposal (RFP) form that you can fill out to get a quick price quote?

Mr. Silver began his legal career at an intellectual property boutique law firm that handled a large volume of  international work.  Here, he regularly helped convert PCT applications into US national stage patent applications and prosecute such cases to allowance (results cannot be guaranteed).  These US applications can be in the form of regular applications, patent prosecution highway accelerated examination, or some other form of accelerated examination. 

 

With foreign patent attorneys or foreign law firm associates, silverlegal is open to different relationships whether driving the analysis and recommendations or reviewing their strategies. 

 

Translations are a significant component and cost of national phase applications.  We can request the foreign associates to create the translations of the specifications and references, or we can use other available translation services.

Unlike at the USPTO, many other countries require you to pay for and request examination. 

Forms

USPTO Forms are available on this website.  Below silverlegal has selected some forms that might be useful for you.

We hope the above is useful to you.  If any of the above links are or become broken, please let us know.  All forms are provided AS IS with all faults and are typically used with applications filed on or after 12 September 2012  Use of these forms is at your own risk, and silverlegal or its attorneys do not take any responsibility for your usage.  Speak to an attorney about your specific facts and circumstances to know which form is right for your needs or if you need a custom document.

You need to have a signed engagement letter with silverlegal before submitting a Power of Attorney making silverlegal your attorney of record.  Request an engagement letter by entering your contact information and a brief message into the form below.  

Did you know that you can sign most USPTO documents with the USPTO's prescribed form of s-signature that depends on the context?  For example, you may be able to use the format / First Last /.  See this document for examples.  

Many foreign patent offices require notarization and legalization of the power of attorney to the foreign associates.  This can increase the complexity, costs and burden.  It is recommended not to wait until the country's filing deadline to get started.

If you are a US inventor and want to file internationally, we can help you with the PCT filing and arranging national filings around the world and overseeing the work of foreign associates.  We can work with international law firms right-sized for the stage of your company.  We use innovative billing models to give you transparency and predictability  into our fees.

Nothing on this page should be construed as legal advice.  Please consult an attorney for your situation.