Protect your invention in foreign countries
Once you file your patent application in the United States, you have started a clock that when it runs out will prevent you from obtaining a patent in a foreign country if you do not take appropriate action. That clock runs for a year.
Your alternatives are to file in the foreign countries (or groups of countries) of your choice within one year or file a Patent Cooperation Treaty (PCT) application to extend the filing deadline to at least two and a half years.
As of the date of this article, 136 countries are PCT-compliant member states. This includes almost every country in the world, and non-members are unlikely to have significant markets that require patent protection.
When you timely file in foreign countries or file a PCT application, you retain your US filing date as the priority date for use in those foreign countries. The priority date is important because other countries grant inventions to the first to file, rather than to the first to invent as in the United States. Therefore, others cannot enter later and obtain patents on applications filed after their priority date. In addition, your priority date may be important in overriding references (publications and patents) after your priority date, and therefore cannot be used to reject your application.
For most countries, the maximum limit through the PCT process is 30 months. If your application is not filed by that deadline in those countries, you will no longer be able to obtain patent protection in those countries where you have not filed a national phase application. Filing in Europe through the European Patent Office has an alternative term of 31 months and Canada has a term of 42 months, although late filing fees may apply.
The member countries of the European Patent Organization that can be included under a European Patent are currently Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Hellenic Republic, Iceland, Ireland, Italy, Latvia , Liechtenstein, Lithuania, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
There are other patent organizations that provide services in important areas of the world, such as Africa, South America, Asia, etc.; however, at present only Africa (two separate organizations having different member countries) and a Eurasian group consisting of some of the former Soviet Union countries hold collective patents to cover their constituent counties.
As with the US, most countries require practitioners before their patent offices to be registered in their country. Your registered US patent attorney can help you with foreign filing by working with associate attorneys in foreign countries who are licensed to process patent applications in their countries. It should be noted that different countries have different laws and those who practice in those countries will likely be the best able to fully understand the laws of their country.
Unlike the United States, many foreign countries have maintenance fees that must be paid during the application process. Therefore, the initial costs of filing abroad and subsequent processing will be increased by such fees. Consequently, it is most desirable in foreign locations to process your application promptly.
When considering filing abroad, you should keep in mind that your US patent will prevent anyone from making, using, offering for sale, selling, or importing your device in or into the United States. So, with only a US patent, while your device could be made, say, in China and sold, say, in Mexico, neither China nor Mexico could legally ship your device to the United States.
Finally, a word of caution: Although the United States allows an inventor to file a patent application within one year of the first public disclosure, sale, or offer for sale, such actions could void your priority for filing purposes in some foreign countries. countries. Therefore, it is prudent to file your US patent application before filing your product.
This article, and/or reading it, shall not be construed as an offer, content, or receipt of legal advice, and shall not create any attorney-client relationship or privilege. If you are considering protecting your intellectual property, you should consult with an attorney of your choice.
C2007, Williamson Intellectual Property Law, LLC; All rights reserved throughout the world.