Since its early embrace of hydrofracking technology in the 1940’s, the United States has become a leading producer of shale gas over the past century. By contrast, the international adoption of fracking has been more subdued. As a result, many domestic fracking companies have historically not sought foreign patent protection for gas extraction technologies, focusing instead on domestic intellectual property protection.

Against the backdrop of an ever-evolving geopolitical landscape, fracking has become a compelling interest to an increasingly global audience in recent years as foreign governments and producers seek energy independence and economic stability. Correspondingly, there has been an uptick in foreign entities looking to harness the technical expertise of veteran U.S. fracking industry players. This expanding frontier of international shale gas extraction has led industry players to explore options for patent protection on a global stage for the first time.

Patent laws vary greatly from one country to the next, and potentially deadly pitfalls await those who are unfamiliar with the procedure of a given jurisdiction. Early discussions and planning regarding international intellectual property protection strategy are imperative in order to prevent the unintentional forfeiture of foreign patent rights.

1. A Brief Overview of United States Utility Patent Filing Procedure

In the United States, an inventor has one year from the first public disclosure or from the first commercialization of their invention to file a provisional or nonprovisional utility patent application.

• Provisional Applications

Provisional patent applications are not examined. These low-cost applications simply hold an applicant’s “place in line” in terms of priority date and will automatically become abandoned after one year. While a provisional patent application does not require claims or an inventor oath or declaration, it should include at minimum a specification, drawings if applicable, provisional cover sheet or application data sheet, and the filing fees.[1] If a provisional application is filed, the applicant must then convert the provisional application to a nonprovisional application within a year in order to claim the benefit of the earlier provisional filing date as to the subject matter disclosed therein.

• Nonprovisional Applications

Nonprovisional patent applications are examined by the USPTO and, if the legal requirements are met, will issue as a U.S. utility patent. Nonprovisional applications must contain at a minimum: a specification including at least one claim and complying with Section 112 of the Patent Act; a drawing if necessary to understand the invention; an inventor oath or declaration; and the filing fee.[2]

• Nonpublication Requests

The USPTO allows applicants to request that a nonprovisional application is not published by filing the request for nonpublication when the nonprovisional patent application is filed.[3] Sometimes, an applicant may wish to keep the pending application from publishing so that they maintain the ability to protect the disclosed technology as a trade secret. As a condition of the request for nonpublication, applicants must certify both that the application has not and will not be filed in a foreign jurisdiction. While it is possible to withdraw a request for nonpublication in the event an applicant later wants the application to publish, as explained below, a nonpublication request can impact an applicant’s ability to seek international patent protection even if it later rescinds it.

2. The Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO). The PCT provides a mechanism by which an applicant can seek patent protection in one or more PCT signatories or “contracting states” by filing a single PCT application rather than separate applications in each jurisdiction. This unified application process can greatly reduce the burden of filing internationally in multiple countries. Importantly, the PCT does not provide a pathway to a single “international patent.” As of the date of this article, there is no such thing as an international patent.

The PCT currently has 158 contracting states.[4] Further, there are currently four groups of countries, or “regions,” each represented by a unified office that will issue regional patents under the PCT: the African Regional Intellectual Property Organization (ARIPO) issues AP regional patents, the Eurasian Patent Organization (EAPO) issues EA regional patents, the European Patent Office (EPO) issues EP regional patents, and the African Intellectual Property Organization (OAPI) issues OA regional patents.[5] Some states only allow an applicant to obtain a regional patent, and do not extend national patents.[6] Some states allow applicants to obtain a regional patent in addition to, or instead of, a national patent.[7] Finally, some states that are not included in the regional designation will allow the extension and validation of a regional patent.[8]

Though uniform in the early aspects of filing, a PCT application still must be evaluated by each country or region in which the applicant seeks protection, and a given country or region will issue its own patent only if the application meets that jurisdiction’s requirements for patentability. Thus, the PCT filing process can be divided into two main phases: the international stage, which is the same for all PCT applications, and the national stage, which differs based on the country or region in which the applicant seeks protection. The basic procedure for filing a PCT application includes the following general phases:

International Stage:

• Applicant must file the PCT application in an appropriate “receiving office” with the national patent office in the contracting state where the applicant resides.
• An international searching authority (ISA) will then provide a patentability search and opinion to the applicant.
• If the PCT application is not withdrawn based on the results of the international search, the application will publish approximately 18 months after the application’s priority date. Note that this may conflict with and would prevent the use of a non-publication request in the United States and many other member states.

National Stage:

• The applicant may then elect to proceed with the national application process, whereby the applicant must file separate applications in each country or region where it seeks patent protection. This is called entering the “national stage.”

Filing a PCT application in some cases will allow an applicant to delay filing most national patent applications for at least 30 months from the priority date, though it depends on the particular jurisdiction (e.g. an applicant who files a PCT application must enter the national phase in Brazil within 30 months of the priority date, but must enter the national phase in Colombia within 31 months of the priority date).[9] This built-in delay can be highly beneficial to applicants in that it allows time for applicants to fully evaluate and explore available options while still securing an early filing date.

3. Argentina and Other Jurisdictions Outside of PCT

Some jurisdictions of interest for shale gas exploration and production are not signatories of the PCT. This means that an applicant must file directly with that country. For example, Afghanistan, Bolivia, Guyana, Paraguay, Suriname, Venezuela, and Pakistan are not PCT signatories and require direct file.[10]

Likewise, emerging shale colossus, Argentina, is not currently part of PCT. That said, it has committed to submit to the PCT in the near future.[11] As of now the process has been stalled in Argentina and details about exactly how and when PCT membership will become effective are not readily available.[12] In the meantime, applicants must file directly with the Argentine patent office: the Instituto Nacional de la Propiedad Industrial.[13]  Argentina is a signatory of the Paris Convention, which gives a 12 month window for applicants to file a patent application from the first disclosure or filing.[14] This means that if an applicant has filed a provisional application in the United States and wants to file in Argentina as well, the applicant must file the Argentinian application no later than the deadline for conversion to a U.S. nonprovisional application and must attach to the Argentinian application copies of all other filings that have been made in other jurisdictions, including any provisional application that may have been filed.

4. Common Procedural Pitfalls: Requests for Nonpublication

With such a tight deadline to file in Argentina and other many other non-PCT jurisdictions, a minefield of procedural snares awaits applicants who do not adequately prepare an international filing strategy on the front end of a patent prosecution. Requests for nonpublication are one such potential pitfall that can result in the loss of international filing ability.

Take, for example, a common prosecution strategy in oil and gas extraction technologies: an applicant files a nonprovisional application in the United States claiming priority to a provisional application with a request for nonpublication. This strategy has allowed countless applicants in the past to protect their domestic oil and gas technologies while not disclosing anything to the public until they are certain that a patent will be granted, thereby maintaining the best possible protection of the applicant’s trade secrets while a patent application is pending.

In most instances this common strategy would effectively bar a filing in Argentina. As stated above, under Argentinian law, the filing of any application, even a United States provisional, will start the clock on the 12-month deadline to file an application in Argentina. Nonpublication requests in the United States delay the publication of an application in the United States, which would ordinarily occur 18 months after the filing of the application.

Yet a condition precedent to filing a nonpublication request in the United States is a certification that the application has not and will not be the subject of a foreign application that requires publication, like Argentina.[15] It is not enough for an applicant to simply not have decided whether it will file internationally, the applicant must certify that, as of the nonpublication request, it affirmatively intends not to file internationally.[16] If an applicant later decides to file such a foreign application, it must either: (1) rescind the nonpublication request before filing such foreign or international application; or (2) notify the USPTO of such filing no later than 45 days after the filing date of the counterpart foreign or international application.[17]

Practically speaking, where an applicant has converted a provisional to a nonprovisional application in the United States, the time for filing in Argentina has already begun and may be nearly over if it is close to the one-year deadline for converting the provisional application. In very few instances would an applicant be able to make to requisite certifications underlying a proper nonpublication request and also have time to then change its mind and file internationally. The penalties for violating the USPTO rules concerning nonpublication requests can include abandonment of the application in the United States, and in some cases where an application is part of a family of related applications can jeopardize those related applications as well.[18]

5. New Times Call for New Strategies

As companies expand their intellectual property portfolios in the wake of the international shale revolution, old strategies appropriate for domestic intellectual property protection will not always suffice and may even cause irreversible damage on the international stage. Companies need to have these discussions on the front end as early as practicable in the patent process. Advanced planning is the best way to prevent potentially irreparable missteps, like filing deadlines or impermissible nonpublication requests.

Taylor Dunne and Devin Ricci are members of Kean Miller’s Intellectual Property and Patent Litigation groups, where they advise innovators, energy companies, and technology-driven businesses on domestic and international intellectual property strategy. Their practice includes patent prosecution, portfolio development, and complex patent litigation, with a focus on helping clients protect and commercialize emerging technologies in highly regulated and globally competitive industries, including oil and gas exploration and production.

[1] MPEP 601; 35 U.S.C. 111.

[2] Id.

[3] See MPEP 122; 35 U.S.C. 122; 37 CFR 1.213.

[4] WIPO, PCT Contracting States, https://www.wipo.int/en/web/pct-system/pct_contracting_states (last accessed March 18, 2026). See also WIPO, PCT Contracting States and Two-letter Codes as of 1 February 2026, https://www.wipo.int/documents/d/pct-system/docs-en-list_states.pdf (last accessed March 18, 2026). Uruguay is the most recent addition to the PCT Union, and as of January 7, 2025, foreign entities can use the PCT System to seek patent protection there. WIPO, Uruguay joins the PCT, https://www.wipo.int/en/web/pct-system/w/news/2024/news_0027 (last accessed March 18, 2026).

[5] WIPO, PCT Regional Patents, https://www.wipo.int/en/web/pct-system/texts/reg_des (last accessed March 18, 2026).

[6] For example, only a regional EP patent may be obtained for France. Id.

[7] For example, Germany allows applicants to obtain a regional EP patent in addition to or instead of a national patent. Id.

[8] For example, Morocco, though not included in the EP regional designation, will allow the extension and validation of an EP regional patent in that jurisdiction. Id.

[9] WIPO, Time Limits for Entering National/Regional Phase under PCT Chapters I and II, https://www.wipo.int/en/web/pct-system/texts/time_limits (last accessed March 19, 2026).

[10] As an aside, these states are bound by the Paris Convention, amended most recently in 1979, and generally have a 12-month deadline for filing patents and utility models after filing in one of the Contracting States. WIPO, Summary of the Paris Convention for the Protection of Industrial Property (1883), https://www.wipo.int/en/web/treaties/ip/paris/summary_paris (last accessed May 12, 2026).

[11] See United States of America – Argentine Republic Agreement on Reciprocal Trade and Investment, Annex III, Section 1, Article 1.9(2) (Feb 5, 2026) (“Argentina shall submit the Patent Cooperation Treaty, done at Washington on June 19, 1970, as amended on September 28, 1979, and modified on February 3, 1984, to Congress for consideration and a vote on ratification by April 30, 2026”).

[12] El Diario AR, Diputados suspendió el debate por el tratado de patentes en medio de presiones cruzadas de laboratorios, https://www.eldiarioar.com/politica/diputados-suspendio-debate-tratado-patentes-medio-presiones-cruzadas-laboratorios_1_13140308.amp.html (April 13, 2026) (“La Cámara de Diputados suspendió el tratamiento del Tratado de Cooperación en materia de Patentes, previsto para este martes, en un contexto de tensión entre el Gobierno y los laboratorios nacionales. La iniciativa, vinculada al acuerdo comercial entre Argentina y Estados Unidos, quedó por ahora sin fecha de debate”).

[13] https://www.argentina.gob.ar/inpi.

[14] See note 10, supra.

[15] MPEP 1122.

[16] Id.

[17] Id. See also MPEP §§ 1123 and 1124.

[18] See 35 U.S.C. 122(b)(2)(B)(iii).