International Patent Protection
Understanding How To Patent An Invention Internationally.
United States' patents only allow the inventor to exclude others from making, using, offering-for-sale, and selling the invention in the United States.
To obtain patent protection outside of the U.S., the inventor must file a separate patent application in the countries in which patent protection is desired. Two prominent methods exist for filing a patent application into foreign countries.
The Patent Cooperation Treaty (PCT).
The Patent Cooperation Treaty entered into force in 1978 and now has 144 Contracting States. Several advantages exist when filing an international PCT patent application.
- Reduced Cost. The inventor can prepare and file a single patent application in a single language designating all 144 Contracting States.
- PCT Patentability Search. The PCT International Search Authority performs a search to find the most relevant prior art documents and submits the results of the search along with written opinion regarding patentability. This typically occurs before the inventor has to pay any fees or costs to enter any of the designated Contracting States.
- Delayed Entry Into Foreign Countries. Once filed in the PCT infrastructure, the inventor can defer entry of the international PCT patent application into one or more of the designated Contracting States for up to 30 months. However, the PCT patent application will expire in those Contracting States in which the PCT application was not filed at the end of the 30-month period. A few Contracting States allow 31 months or more to file PCT patent application.
- Avoids Restriction Practice By The USPTO. When a patent application enters the United States via the PCT, the U.S. Patent and Trademark Office cannot use the narrower definition of invention under United States patent law to restrict the claimed inventions into several United States patent applications. The inventor can typically have a greater number of claims examined in a single patent application, which can avoid or reduce the costs of filing subsequent continuing patent applications to have all the patentable subject matter examined for patentability.
- European Regional Phase. When a patent application enters Europe via the PCT, a single patent application can be examined by the European Patent Office to grant a single patent for all 35 Contracting States of the European Patent Convention.
- Priority To Earlier Filed U.S. Patent Applications. The inventor can first file a patent application in the United States and defer filing the Paris Convention patent application for up to one year and still claim priority to, or the benefit of, the earlier filing date in the Untied States. The priority date acts to exclude prior art published after the filing date of the United States patent application and before the filing date of the PCT patent application.
THE PARIS CONVENTION.
The Paris Convention entered into force in 1883. Under certain circumstances, filing a patent application in foreign countries via the Paris Convention can afford advantages over filing via the Patent Cooperation Treaty.
- Certain Countries Are Not Members of the PCT. A handful of countries are not Contracting States to the PCT. To obtain patent protection in these non-PCT countries, the inventor must file the patent application via the Paris Convention.
- Reduced Cost. If the inventor only wants to file a patent application in several countries, then the cost of filing a separate application in each country via the Paris Convention may be less expensive than filing via the PCT.
- Expedited Examination of Patent Application. Patent applications filed via the Paris Convention are typically examined and patent protection can be obtained in a lesser period of time than for patent applications filed under the PCT.
- Priority To Earlier Filed United States Patent Applications. The inventor can first file a patent application in the United States and defer filing the international Paris Convention patent application for up to one year and still claim priority to or the benefit of the earlier filing date in the United States. The priority date acts to exclude prior art published after the filing date of the United States patent application and before the filing date of the Paris Convention patent application.
STRICT NON-DISCLOSURE RULES IN MOST FOREIGN COUNTRIES.
United States inventors and companies unwittingly lose the opportunity to obtain foreign patent protection by publicizing their inventions before filing a patent application. Unlike U.S. patent law, which affords a one-year grace period from the date of disclosing the invention to the date of filing a patent application in the U.S., the patent laws of most foreign countries require a patent application be filed prior to any disclosure of the invention. Disclosing the invention anywhere in the world by any of a variety of actions on the part of the inventor can render the invention ineligible for patent protection in countries outside the U.S.