International Patent Protection


Introduction

International patent protection can be invaluable. US patents only protect against the importation, sale or use of patented devices and methods within the US.  There is no single “international patent”.  Each country maintains its own patent system. However it is possible to obtain patent protection in other countries based upon your US patent filing, i.e., the application filed in the US Patent and Trademark Office (USPTO).  This article provides a simple introductory outline of the steps needed to pursue patent protection outside the US.  It attempts to answer the question of “How to obtain foreign patent protection”.

NOTE THAT YOU CANNOT WAIT UNTIL A US PATENT IS ISSUED TO DECIDE TO PURSUE PATENT PROTECTION IN OTHER COUNTRIES!!

Discussion

There are several threshold issues that need to be addressed when thinking about pursuing foreign patent protection.

First, most countries require absolute novelty, i.e., that the invention has not been disclosed or publicly used PRIOR to filing a patent application.  (The US provides an inventor a 12 month grace period to file.  However this is not the typical case.)

Second, a proper US application will be recognized under international treaty as a valid patent application for initiating foreign patent protection, provided a foreign application is filed within 12 months of the US filing.  NOTE that use or disclosure within the US prior to the US filingwill destroy the “absolute novelty” requirement, even though the invention can still be eligible for US patent protection.  

The remedy?  File a proper provisional application immediately before any use or disclosure.  The provisional application should include at least one patent claim and an oath or declaration of inventor.  Remember that a provisional must also provide enough information that a person skilled in the relevant technology will understand how to make or use the invention without “undue experimentation”.  The provisional filing will not be published.

Note that a provisional application will start two concurrent12 month clocks.  One will be the 12 month limit to file a non-provisional application in the US.  See my articles Provisional Applications for Patentand DIY Provisional Applications.  Second will be the 12 month clock to initiate foreign patent filing.

A third consideration is that initiating and pursuing foreign patent protection is expensive.  Therefore it will be important to use the 12 months following filing of the US provisional to gauge the foreign market for your invention.  (I recognize this is anotherburden imposed upon the startup entrepreneur.  Also be aware that inventions comprising computerized business methods may not recognized as patentable subject matter in many foreign countries.) 

Patent Cooperation Treaty

Foreign patent filing typically begins with filing a “PCT” application.  The application may consist of your US filed non-provisionalapplication.  The application may be filed in English.  The PCT filing fee will vary based upon the length of your application, including drawings.  The basic PCT filing fee can be approximately $2,800.00.  This compares to the US basis non-provisional filing fee of $785.00.

The PCT application will having an effective date, i.e., “priority date” that is the first US filing date.  Remember the first US filing date can’t be more that 12 months prior to the PCT filing date.  Also remember that nearly all countries award patent protection to the first inventor to file an application for patent.  If done correctly, date of your provisional patent application can give you world-wide priority for inventorship. 

It is important to recognize that the PCT does not award or issue patents.  The PCT acts more as a clearing house for international applications.  Typically, the PCT application must be converted to applications filed in specific foreign countries within 30 months of the priority date.  Remember the priority may be the date of you filed your initial provisional application. Effectively, you have 2 and ½ years to file an application is a specific country after filing your initial US application.  However, this is all contingent upon you having correctly filed a PCT application.

As a further complication, you can bypass the PCT step and file your application directly into a foreign country provided it is filed no more than 12 months after your US filing date.  You may determine that it is worthwhile to file patent protection only in the NAFTA countries and therefore file only in Canada and Mexico. Therefore you can skip the PCT filing fee.

It will be necessary to have local country legal representation.  However most US patent attorneys maintain relationships with corresponding foreign patent counsel. Therefore this is not an impediment. 

Conclusion

The above is a brief introduction to the process and costs of filing for international patent protection.  Again, you cannot wait until after you have received your US patent to think about pursuing patent protection.  At that point, the deadlines for taking action will have long ago expired.

Copyright David McEwing, 2019