Document type: Article Practice area: Intellectual Property — Patents Jurisdiction: United States and international Last reviewed: 5 September 2026

The thing that does not exist

Start with a correction, because it is the correction that saves the most money.

There is no international patent. There is no world patent, no global patent, no PCT patent. A patent is a national instrument granted by a national authority and enforceable in a national court. The World Intellectual Property Organization does not grant patents. The Patent Cooperation Treaty does not grant patents. What exists is a set of treaties that coordinate the filing process across national systems — that let a single application hold a place in line in many countries at once, that let one search inform many examinations, and that let an applicant defer the moment of paying for all of it. The treaties buy time and information. They do not buy rights.

Clients hear "we filed the PCT" and understand it to mean "we have international protection." They do not. They have an option, which expires, and which costs a great deal to exercise. Explaining that difference clearly in the first meeting is worth more than anything else in this article.

The second correction follows from the first: the priority year is the whole game. A patent application filed in the United States creates, under the Paris Convention and 35 U.S.C. § 119, a twelve-month right of priority — a period during which corresponding applications filed in other member countries are treated as though they had been filed on the original date. Twelve months. Not thirteen. The date does not move, cannot be extended by agreement, and is not forgiving of an inventor who was traveling, a general counsel who was on leave, or a docketing system that was migrated. Everything else in international patent practice is downstream of that date.

A running example

Halvorsen Aerothermal is a fifty-person company in Minneapolis that makes a microchannel heat exchanger for industrial refrigeration. The core technology is a manufacturing process — a diffusion-bonding sequence that produces channel geometries nobody else can produce economically — plus the resulting device. Dr. Ingrid Halvorsen-Mbeki founded the company after eleven years at a large equipment manufacturer. Paolo Restrepo-Whitfield is the general counsel, hired eighteen months ago, and the first lawyer the company has ever employed.

Halvorsen filed a United States provisional application on 14 March 2025. Its customers are in Germany, Japan, South Korea, and increasingly China. Its competitors manufacture in China and Italy. Its investors have started asking, in the way investors do, what the international protection looks like.

Restrepo-Whitfield's first act was to build a calendar. It turned out to be the right first act. We will follow that calendar, because the calendar is the practice.

Month 0: the priority filing, and the two traps

The priority date is set by the first filing that discloses the invention. For Halvorsen, that is 14 March 2025.

A provisional application under 35 U.S.C. § 111(b) is a perfectly good priority document, and it is cheap, and it is where most American companies start. It is also where most American companies create their worst international problems, for a reason that has nothing to do with the provisional mechanism and everything to do with how provisionals get written. A provisional is never examined. It never issues. It is, in practice, frequently a slide deck, a lab notebook excerpt, and a paragraph of description filed at the end of a quarter to get a date.

That is fine until you try to claim priority from it. Priority under § 119 and the Paris Convention requires that the priority document support the claims in the later application — that it disclose the invention in a manner sufficient to satisfy the written description and enablement standards of 35 U.S.C. § 112. Foreign offices apply their own versions of this requirement, and several apply them more strictly than the USPTO does. The European Patent Office in particular takes a narrow view: if the claim as later drafted is not directly and unambiguously derivable from the priority document, priority is lost for that claim, and the intervening year of the applicant's own publications and sales becomes prior art against it.

Restrepo-Whitfield read the March 2025 provisional and found the first real problem: it described the diffusion-bonding process at temperatures "of approximately 950 degrees Celsius" and the working examples all used 950. The engineering team, meanwhile, had spent the intervening year discovering that the process worked across a range of 890 to 1,020 degrees, and wanted to claim the range. In the United States, an argument can sometimes be made. At the EPO, adding "890 to 1,020" to a document that discloses only "approximately 950" is added matter under Article 123(2) of the European Patent Convention, and it is close to fatal. The range can go into the new application, but it will not get the priority date, and it will be examined against everything published in the priority year — including Halvorsen's own conference paper from October 2025.

That is the first trap: a thin priority document is a cheap option on a narrow invention.

The second trap is the one that voids patents. Under 35 U.S.C. § 184, an application for a patent on an invention made in the United States may not be filed in a foreign country until six months after the United States filing, unless a foreign filing license has been obtained. The license is routinely granted — it usually appears on the filing receipt, and most practitioners never think about it again. But 35 U.S.C. § 185 provides that a United States patent is invalid if the invention was filed abroad without the required license. The implementing rules are at 37 C.F.R. Part 5.

This matters in exactly the situations where nobody is thinking about it: an invention made by an engineer in a United States office but first filed by the parent company's patent department in Munich; a joint development where the partner files in its own country; an inventor who moves and files locally; a company that acquires a portfolio and inherits a filing sequence it did not control. Halvorsen has a contract engineer in Bengaluru and a consulting relationship with a laboratory in Trondheim. Restrepo-Whitfield's second act was to write a two-page policy: no application on any invention with a United States-based inventor gets filed anywhere before the United States, without a license, without exception. That policy costs nothing and prevents an unfixable defect.

The absolute novelty problem, and why the United States grace period is a trap for the unwary

United States practitioners are trained on a grace period. Under 35 U.S.C. § 102(b)(1), a disclosure made by the inventor (or by someone who obtained the subject matter from the inventor) one year or less before the effective filing date is not prior art. That is a genuine safety valve, and American inventors use it constantly: they present at a conference, publish a paper, show a prototype at a trade show, sell a unit — and then file.

Most of the world does not work that way. The European Patent Convention, and the laws of China, most of Latin America, and many other jurisdictions, apply absolute novelty: any public disclosure anywhere before the priority date is prior art, including the inventor's own. There are narrow exceptions — abuse, and certain officially recognized international exhibitions — and they are narrow enough that you should not plan around them. Japan and South Korea provide grace periods, but they are conditional, procedurally demanding, and shorter than practitioners assume; treating them as equivalent to the United States grace period is a mistake.

The practical consequence is that a United States company can do everything correctly by American standards and destroy its European and Chinese rights in the process. The engineer presents at the ASHRAE winter conference in January. The provisional gets filed in March. The United States rights are fine. The European rights are gone before anyone opens a file.

Halvorsen came close. Dr. Halvorsen-Mbeki gave a technical talk in November 2024 — four months before the provisional. Restrepo-Whitfield tracked down the slides. They described the channel geometry and the performance data but not the bonding sequence, and the claimed process is the bonding sequence. The device claims are compromised in absolute-novelty jurisdictions; the process claims survive. That is a survivable outcome and a lucky one. The lesson went into the same two-page policy: nothing public before the filing, and the patent group sees the abstract before the conference committee does.

Months 0–12: the priority year, and what it is for

The priority year is not dead time. It is the year in which three things should happen.

First, the invention gets developed and the disclosure gets thickened. Whatever the priority document did not describe, the non-provisional or PCT application filed at the end of the year can describe — it just will not get the earlier date for the new matter. The right practice is to file the priority document as fully as you can afford, and then to file again as the invention develops, so that a family of priority documents supports the eventual claims. Halvorsen filed a second provisional in September 2025 covering the temperature range and a new manifold design. It costs a few thousand dollars and it preserves an option.

Second, the commercial picture comes into focus. Where are the customers? Where are the competitors manufacturing? Where would an injunction actually change someone's behavior? These questions are answerable in month ten in a way they were not answerable in month zero, and the entire value of the priority year is that it lets the filing decision be made with a year more information.

Third, the money gets budgeted. Which brings us to the number.

The number

Here is an honest cost model, in current-dollar order of magnitude, for a mid-complexity mechanical or electromechanical case. Numbers vary widely; the shape does not.

  • United States provisional: $4,000–$10,000.
  • United States non-provisional: $12,000–$20,000 to prepare and file.
  • PCT application: $5,000–$8,000 in fees and filing costs, on top of the drafting already done.
  • National phase entry: $4,000–$12,000 per country, driven overwhelmingly by translation. Japan and China are at the high end because everything must be translated. Europe is moderate at entry and expensive later.
  • Prosecution in each country: $5,000–$25,000 over the life of the case, more where there are oppositions.
  • Annuities and maintenance: $20,000–$60,000 per country over a twenty-year term, back-loaded — the late-year annuities in Europe and Japan are substantial.

A single invention protected in the United States, Europe (validated in four countries), Japan, South Korea, and China will cost somewhere between $150,000 and $400,000 over its life. That is one invention. A company filing eight inventions a year at that footprint is running a seven-figure annual patent budget.

Say this number out loud, early, to the person who controls the budget. The most common failure in international patent practice is not a legal error. It is a portfolio built on an unfunded assumption, abandoned in year four when the annuities arrive, having spent two hundred thousand dollars to acquire nothing.

Month 12: the fork

At the twelve-month mark the applicant must choose between two roads.

The Paris route means filing directly in each country of interest, on or before the twelve-month anniversary, each claiming priority under the Paris Convention. Each application enters that country's system immediately. Translations are due at or near filing. Examination begins on that country's schedule.

The PCT route means filing a single international application under 35 U.S.C. § 361 and the Patent Cooperation Treaty, designating all member states, which under 35 U.S.C. § 363 has the effect of a regular national filing in each designated state as of the international filing date. The applicant then has until thirty months from the priority date — thirty-one in some jurisdictions — to enter the national or regional phase in the countries it actually wants.

The trade-offs are real and they cut both ways.

Choose the PCT when — and this is most of the time — you want the extra eighteen months. You get an International Search Report and Written Opinion at around month sixteen to eighteen, which is genuine prior-art intelligence before you commit. You defer the large per-country spend by a year and a half. You keep every PCT member state open rather than choosing at month twelve. You preserve the ability to add countries as the market develops. And you buy time for the business to reveal whether this invention is the one worth protecting globally.

Choose the Paris route when you want speed — a direct national filing can issue years earlier — or when you know exactly which two or three countries matter and adding a PCT layer just adds cost. A company with a single European market and a fast-moving competitor may be better served filing directly at the EPO at month twelve than waiting until month thirty.

Choose both where it makes sense: a direct filing in the one country where speed matters, plus a PCT for everywhere else. Nothing prevents it.

Halvorsen filed a PCT application on 12 March 2026, two days before the anniversary. That is two days too close, and Restrepo-Whitfield knows it. The lesson from that near miss produced the company's standing rule: the internal deadline for any priority-year filing is sixty days before the statutory date.

Inside the PCT: what actually happens

The PCT process has a rhythm worth understanding, because clients get anxious during the long quiet stretches and because two of its outputs are genuinely useful.

The international filing. One application, one language, one set of fees, filed with a Receiving Office — for a United States applicant, typically the USPTO acting under 35 U.S.C. § 361, or the International Bureau directly. All PCT member states are designated automatically. There are more than 150 of them, which covers essentially every market a client is likely to name, with a few significant exceptions worth checking case by case.

The International Search Report and Written Opinion, issued by an International Searching Authority at roughly month sixteen. The ISR lists prior art with relevance categories; the Written Opinion gives a preliminary, non-binding view on novelty, inventive step, and industrial applicability. This is the most underused document in the process. It is a free examination-quality prior art search delivered eighteen months before you have to spend serious money, and it should drive a real decision: prosecute, narrow, or abandon.

United States applicants can often choose their ISA. The choice matters. Different authorities search different literature with different rigor and charge different fees, and an ISA whose opinion the EPO will treat as its own can save a full round of European prosecution. Ask your foreign associate, not your docketing system.

International publication at eighteen months from priority. The application becomes public. This is also when 35 U.S.C. § 122 publication occurs for the United States application, and it is when your competitors find out what you are doing. Publication is a feature — it creates provisional rights in some jurisdictions and it puts the world on notice — but the client should know the date.

Chapter II and the demand. An applicant may file a Demand for International Preliminary Examination, which produces an International Preliminary Report on Patentability and, importantly, allows amendment and argument in response to the Written Opinion. Whether to demand is a judgment call. It costs money and it rarely binds anyone. It is worth doing when the Written Opinion is negative and a well-supported amendment could turn it, because a positive IPRP smooths national-phase prosecution in several jurisdictions and can qualify the case for accelerated examination programs. It is usually not worth doing when the Written Opinion is positive or when you plan to enter only one or two national phases anyway.

Article 19 and Article 34 amendments let the applicant adjust the claims during the international phase. They are useful, and they are bounded by the same added-matter discipline that governs everywhere else.

Month 30: the national phase, where the money goes

This is the cliff. At thirty months from the earliest priority date, the applicant must enter the national or regional phase in each jurisdiction it wants, paying entry fees, filing translations, appointing local agents, and beginning real prosecution in each. For Halvorsen, priority is 14 March 2025, so national phase entry is due 14 September 2027.

United States national-stage entry is governed by 35 U.S.C. § 371. A United States applicant may also file a bypass continuation under 35 U.S.C. § 120 instead — a regular continuation claiming benefit of the PCT application rather than entering the national stage under § 371. The bypass has real advantages: it permits preliminary amendments more freely, avoids some formalities, and lets the applicant restructure claims for United States practice. Many United States firms bypass as a matter of course. It is worth understanding why your firm does what it does.

The pruning decision. Nobody enters thirty countries. The list gets cut, and it gets cut on business grounds. Ask:

  • Where is the revenue? Not the addressable market — the actual and projected revenue.
  • Where do competitors manufacture? A patent in the country of manufacture stops the product at the source. A patent only in the country of sale means chasing units.
  • Where would you actually enforce? Litigation costs and injunction availability vary enormously. A patent in a jurisdiction where you will never sue is a subscription, not an asset.
  • Where does a patent matter for reasons other than enforcement? Licensing leverage, investor diligence, customer procurement requirements, government tenders.
  • Where is enforcement realistically effective? This has changed a great deal in the last decade; assumptions formed in 2010 about particular jurisdictions are frequently wrong now.

Halvorsen entered the national phase in the European Patent Office, Japan, South Korea, China, and the United States. It considered and rejected India, Brazil, and Canada — not because those markets do not matter, but because at Halvorsen's size a five-jurisdiction portfolio it can afford to maintain beats an eight-jurisdiction portfolio it will abandon in 2031.

Translation is the dominant cost and it is a legal act, not a clerical one. A translation error narrows a claim, and in most jurisdictions the translated text is the operative text. Budget for a technically qualified translator and for the foreign associate to review the translation against the original. Halvorsen's Japanese associate, Hiro Tanigawa-Bell, caught a rendering of "substantially planar" that would have read as "flat" — a limitation the company could not have met with its own commercial product.

Foreign prosecution: the differences that actually matter

Once in the national phase, each case becomes a local matter handled by local counsel. Three sets of differences deserve attention from the United States side, because they are the ones that change drafting decisions made years earlier.

Added matter and the priority discipline. The EPO's Article 123(2) prohibition on added subject matter is stricter than United States written-description practice. You cannot combine features from different embodiments unless the combination is directly and unambiguously derivable. You cannot introduce a range from a single disclosed value. You often cannot make an intermediate generalization — taking one feature out of a described combination and claiming it alone. And Article 123(3) prevents broadening after grant, which creates the notorious inescapable trap: an amendment that added matter cannot be removed without broadening, so the patent falls. The drafting consequence is concrete: describe ranges, alternatives, and combinations explicitly in the original specification, including the ones you do not currently want. Basis you did not write cannot be created later.

Unity of invention. European and PCT practice apply a "single general inventive concept" standard that is applied more rigorously than United States restriction practice, and non-unity findings mean additional search fees. Structuring claim sets so that the independent claims share a common special technical feature is a drafting skill worth paying for.

Claim format and fees. Multiple dependent claims are normal in Europe and punitively expensive in the United States. The EPO charges claim fees above fifteen claims and steeply above fifty. Two-part claim form (preamble plus characterizing portion) is expected in Europe and generally avoided in the United States because of its admission-like character. Japan, Korea, and China each have their own claim-count economics and formal requirements. A claim set drafted for one office and filed unchanged in another wastes money at best and gives away scope at worst.

Examination request deadlines. Several jurisdictions do not examine automatically. Japan requires a request for examination within three years of the international filing date. China requires one within three years of the filing date. These are hard deadlines that fall well after national phase entry, in the quiet period when nobody is looking at the file. They are among the most common causes of abandoned foreign cases.

Opposition and third-party challenge. The EPO's post-grant opposition window — nine months from the mention of grant — is the single most consequential deadline in European patent practice, and it runs in both directions. If you hold the patent, you may face a centralized attack that can kill the patent in every validated country at once. If a competitor's patent blocks you, opposition is dramatically cheaper than national revocation actions. Docket the grant dates of your competitors' European patents.

Utility models. Germany, China, Japan, and others offer second-tier rights with lower inventiveness thresholds, faster grant, and shorter terms. In China in particular, a utility model can be enforceable years before a patent issues, and a parallel utility model filing is a standard and inexpensive tactic that United States practitioners routinely overlook.

The Unitary Patent and the Unified Patent Court. European practice has changed materially. A European patent may now, on grant, be given unitary effect across participating member states, and the Unified Patent Court has jurisdiction over unitary patents and over classical European patents that have not been opted out. This is a genuine strategic decision with genuine risk on both sides: unitary effect means one renewal fee and one enforcement action across many countries, and it also means one revocation action can take the whole thing down. Opt-out is available for classical European patents during a transitional period. Have the conversation with European counsel before grant, not after.

The docket is the practice

There is a version of international patent practice that consists entirely of dates, and it is the version that determines whether a portfolio survives.

The critical dates for a single family: priority filing; the six-month foreign filing license period; the twelve-month Paris deadline; PCT filing; ISR issuance; the Chapter II demand deadline; eighteen-month publication; the thirty-month national phase deadline (and thirty-one where applicable); per-country examination request deadlines; per-country office action responses on schedules that differ from United States practice; grant and validation deadlines in Europe; the nine-month opposition window; and then annuities, in every country, every year, forever.

Annuities deserve their own sentence. In most jurisdictions annuities begin before grant and continue for the life of the patent, and a missed annuity abandons the patent. Restoration is possible in some places, on some grounds, sometimes. Most companies use an annuity service; the important thing is knowing which entity is responsible for each payment and confirming, annually, that someone is.

Two organizational failure modes are worth naming. The first is the handoff gap: the United States firm assumes the annuity service has it, the annuity service has instructions only for granted cases, and a pending European application lapses. The second is the transition gap: a company changes firms, or is acquired, and dockets are transferred with a spreadsheet, and three deadlines fall into the space between the old system and the new one. Both are preventable by a single practice — an annual reconciliation, family by family, of every pending and granted case against the responsible party and the next date.

What a United States patent reaches, and what it does not

Clients ask why they need foreign patents at all when the infringer sells into the United States. The answer is a doctrine with a long and instructive history.

The baseline is territoriality. A United States patent covers making, using, offering to sell, or selling the invention within the United States, or importing it into the United States, under 35 U.S.C. § 271(a). Activity abroad is not infringement.

Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972) made the point starkly: a defendant that manufactured the components of a patented shrimp-deveining machine in the United States and shipped them abroad for assembly did not infringe, because the complete combination was never made here. Congress responded with § 271(f), which reaches the supply from the United States of components of a patented invention for combination abroad.

Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) then confined that response. Microsoft sent a master disk of Windows abroad; foreign manufacturers copied it and installed the copies on computers sold abroad. The Court held that software in the abstract is not a "component," and that the copies made abroad were not "supplied from the United States." The presumption against extraterritoriality did real work.

WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407 (2018) moved the line the other way on damages. Where domestic infringement under § 271(f)(2) is established, lost foreign profits can be recovered, because the focus of the damages provision is the domestic act of infringement, not the location of the loss. That is a meaningful expansion of remedy — and it remains a remedy for domestic infringement.

The practical synthesis is simple. A United States patent gives you a great deal against a competitor that manufactures, imports, or sells here. It gives you very little against a competitor that manufactures in one foreign country and sells in another. If your competitor's factory is in a country where you have no patent, and its customers are in countries where you have no patent, the United States patent is not the tool. That is the business case for the foreign filing, and it is a better case than "we should have international protection."

Going faster: the Patent Prosecution Highway and its cousins

The default speed of international prosecution is slow. A PCT case entering the national phase at month thirty may not see a first office action for another two years, and grant at year six or seven from priority is unremarkable. For a company whose product cycle is three years, that is a problem.

Several accelerating mechanisms exist and they are underused.

The Patent Prosecution Highway lets an applicant with allowable claims in one participating office request accelerated examination of corresponding claims in another. The mechanics vary, but the shape is constant: you show the second office that the first office found these claims allowable, and you get moved up the queue. It works. It also constrains you — the claims presented must sufficiently correspond to the allowed claims, so the PPH request is a decision to accept a particular scope in exchange for speed. Where the first allowance came after a narrowing amendment you did not love, PPH locks that narrowing into the second jurisdiction.

A positive International Preliminary Report on Patentability can serve as the basis for accelerated treatment in several offices, which is one of the better arguments for filing a Chapter II demand when the Written Opinion is negative but fixable.

Individual offices have their own programs. The USPTO's Track One prioritized examination buys a first action within months for a fee. The EPO's PACE program accelerates without a fee but is granted at the office's discretion and can be withdrawn. Several offices run programs for green technology, and Halvorsen's heat exchanger — a genuine efficiency improvement in industrial refrigeration — qualified for two of them.

The decision to accelerate should be driven by a business event, not by impatience. Accelerate when a competitor is entering the market and you need an enforceable right. Accelerate when a financing or acquisition is scheduled and granted patents materially change the diligence. Accelerate when a customer procurement process requires issued rights. Otherwise, the slow track has an underappreciated virtue: a pending application with claims not yet fixed is, for some purposes, more useful than a granted patent with claims a competitor has designed around, because a continuation strategy can shape claims to the product the competitor actually built.

Designs, and the other Hague

Utility patents are not the whole international filing picture, and design protection is where United States companies most often leave value on the table.

The Hague Agreement provides a centralized filing system for industrial designs analogous in spirit to the PCT: a single international application, filed with WIPO, designating multiple contracting parties, resulting in protection under each designated party's law. The United States is a member. So are the European Union, Japan, South Korea, and the United Kingdom.

For a company whose product has a distinctive appearance — and Halvorsen's exchanger has an unmistakable manifold housing — design protection is fast, comparatively cheap, and enforceable against the copyist who avoids the utility claims by changing the process. The European Union's unregistered Community design right is worth knowing about as well: it arises automatically on disclosure within the EU and lasts three years, which is a genuine remedy against a fast-follower and requires no filing at all — but it depends on where and how the design was first disclosed, which is another reason to plan the disclosure sequence rather than let it happen.

Note the different priority period. The Paris Convention gives six months for designs, not twelve. A company that files a United States design application and calendars a twelve-month foreign deadline has already lost the priority claim.

When not to file

The most valuable advice in this practice area is sometimes to file less.

Trade secret is a real alternative for process technology. Halvorsen's diffusion-bonding sequence is a manufacturing process practiced behind a factory door. A patent on it publishes the sequence to the world at eighteen months, gives twenty years of protection, and can only be enforced if the company can detect infringement — which, for a process practiced inside a competitor's plant on another continent, may be impossible. Trade secret protection lasts indefinitely, costs a fraction as much, and fails completely if the secret leaks or if a competitor independently develops it. The right analysis is detectability: if you cannot tell from the product that the process was used, a patent may be a publication with a fee attached. Many sophisticated manufacturers patent the device and keep the process.

Some jurisdictions are not worth the annuity. A patent maintained for twenty years in a country where the company has no sales, no competitors, and no realistic enforcement path is a recurring cost with no offsetting benefit. The discipline is an annual portfolio review that asks, case by case and country by country, whether this asset would be acquired today at today's cost. Most portfolios contain cases that would not be, and pruning them funds the filings that matter.

Some inventions are not worth protecting. The improvement that will be obsolete in three years, the feature nobody copies, the incremental change that would be designed around in an afternoon — these generate patents that look good in a count and do nothing. Counting patents is a metric that corrupts the practice that produces them.

Common failure modes, collected

A short list of the things that actually go wrong, drawn from the pattern of files that arrive as problems rather than as projects.

The disclosure that preceded the filing. A conference talk, a trade show booth, a published paper, a customer demonstration without an NDA, a crowdfunding page. In absolute-novelty jurisdictions the rights are gone before the file is opened, and there is no fix.

The missed twelve-month date. Usually a docketing handoff, an inventor who did not respond, or a decision deferred past the point of decision.

The thin priority document. A provisional that will not support the claims the business actually needs, discovered at month eleven when there is no time to fix it.

The foreign filing license nobody obtained, on an invention made in the United States and filed first abroad, discovered during diligence years later — when the United States patent, under 35 U.S.C. § 185, may be unenforceable.

The missed examination request in Japan or China, three years after the international filing date, in the quiet stretch when nobody was looking at the file.

The lapsed annuity, from a handoff gap or a firm transition.

The added-matter trap, where an amendment made in year three cannot be undone in year six and takes the European patent with it.

The portfolio that outran the budget, abandoned in year five with the money spent and nothing granted.

Every one of these is a calendar or policy failure rather than a legal one. That is the honest summary of international patent practice: the substantive law is interesting, and the discipline is what determines outcomes.

What good looks like

Eighteen months after Restrepo-Whitfield built his first calendar, Halvorsen Aerothermal has: a two-page disclosure policy that every engineer has actually read; a foreign filing license rule with no exceptions; a priority-year practice of filing a second, thicker provisional as the invention develops; a PCT filed with sixty days of margin; a favorable ISR that eliminated one line of claims before anyone paid to prosecute it; a five-jurisdiction national phase list chosen on revenue and manufacturing rather than aspiration; a funded annuity budget through 2035; and a calendar reconciliation every January in which the general counsel, the outside firm, and the annuity service each confirm what they are responsible for.

None of that is clever. All of it is the difference between a portfolio and a pile of receipts.

Dr. Halvorsen-Mbeki asked, at the end of the first budget presentation, whether all of this was really necessary for a fifty-person company. The answer she got is the right one: the filing decisions are optional and the discipline is not. A company can decide to protect one invention in three countries instead of eight inventions in nine. What it cannot do is make that decision badly, late, and by accident — which is what happens in the absence of a calendar.

Related documents

This article is general information, not legal advice, and does not create an attorney-client relationship.