Once you file your patent application in the United States, you have started a clock running that when it runs out will prevent you from getting a patent in a foreign country if you don't take timely action. That clock runs for one year.
Your alternatives are to file in the foreign countries (or country groups) of your choice within the year or file a Patent Cooperation Treaty (PCT) application to extend the deadline for filing to at least two-and-one-half years.
As of the date of this article, 136 countries are member states that abide by the PCT. This includes nearly all countries in the World and those that aren’t members are unlikely to have significant markets that require patent protection.
When you timely file in foreign countries or file a PCT application, you preserve your U.S. filing date as the priority date for use in those foreign countries. The priority date is important because other countries award inventions to the first to file the application, rather than the first to invent as in the United States. Thus, in foreign venues, others cannot later come in and be awarded patents on applications filed after your priority date. Further, your priority date may be important to negate the effect of references (publications and patents) that are later than your priority date and thus those cannot be used to reject your application.
In order to obtain patent protection in individual foreign countries, whether through the PCT or not, you must ultimately file a national phase application or an application through the European Patent Office (or other patent group) for applicable countries. Under the PCT you must file your foreign patent application within the 30 month time limit or lose your right to obtain protection in the foreign country, unless you file for a European Patent within 31 months or in Canada within 42 months.
The member countries of the European Patent Organization, that may be included under a European Patent, are Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Hellenic Republic, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Monaco, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom.
There are patent organizations servicing major areas of the world, such as Africa, South America, Asia, etc.; however, at present only Africa (two separated organizations having different country members) and a Eurasian group that consists of some of the former countries of the Soviet Union, have collective patents to cover their constituent counties.
As with the U.S., most countries require that practitioners before their patent offices must be registered with their country. Your registered U.S. patent attorney can assist with foreign filing by working with associate attorneys in foreign countries who are authorized to prosecute patent applications in their countries. One should keep in mind that different countries have different laws and those who practice in those countries will likely be the most skilled in fully understanding their country’s laws.
Unlike the United States, many foreign countries have maintenance fees that must be paid even during the application process. Thus, the initial costs of foreign filing and the subsequent prosecution will be increased by such fees. Accordingly, it is all the more desirable in foreign venues to prosecute your application with all due speed.
When considering foreign filing, you should keep in mind that your U.S. patent will allow prevention of anyone from making, using, offering for sale, selling or importing your device in or into the United States. Thus, with only a U.S. patent, while your device could be made in, say, China, and sold to, say, Mexico, neither China or Mexico could legally ship your device into the United States.
Lastly, one word of caution: While the United States allows an inventor to file for a patent application within one year after a first public disclosure, sale or offer for sale, such actions could potentially defeat your priority for the purposes of filing in some foreign countries. Thus, it is prudent to get your U.S. patent application on file before introducing your product.
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C2007, Williamson Intellectual Property Law, LLC; all rights reserved, world-wide.
This article, and/or the reading thereof, shall not be construed as offering, containing or receiving 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.
