Patent Protection Outside the U.S.
International Patent Protection
Perhaps you plan to make and sell a product overseas and don’t want competition there. Or you may plan to manufacture a product in another country for import to the U.S. and don’t want a copy to be made and sold in that country or exported from it.1 Generally speaking, the rights granted by a U.S. patent do not extend beyond the nation’s borders, so if you’re interested in preventing the manufacture, sale, use, import, or export of an invention in other countries, you will need to pursue patents overseas.
If you want to pursue patents overseas, you should file a patent application before making any sales or disclosing the invention non-confidentially (anywhere), because most other nations have no “grace period” during which such sales or disclosures can be made without creating a statutory bar to patenting.2 Generally, the application you file should be a U.S. application, as a foreign filing license is needed before filing an application overseas on any invention made in the U.S. Filing a U.S. application starts the foreign filing license process; barring a national security issue, a license should be issued in a timely fashion.
Under an international convention, nearly every country3 permits the filing of a patent application based on an original patent filing in another country within the last twelve months, giving it an effective priority date of the original filing. So for example if you file a patent application in the U.S. on July 1, 2018, and then file a patent application in China on June 30, 2019 claiming priority to the U.S. application, the second application is generally treated as if it had been filed in China on July 1, 2018.
If you are sure of the countries in which you want to file, then the most economical course in the long run may be to file patent applications directly in those countries within twelve months of filing the U.S. application. If on the other hand you have not during the twelve months determined where you want to file, the best course is to file a Patent Cooperation Treaty (PCT) application, which is an international patent application. A PCT application allows you more time to decide which countries you want to pursue patents in, and delays that pursuit and associated expenses. The same international convention regarding priority applies to PCT applications, so after filing a U.S. application, you can wait up to twelve months to file a PCT application based on it. Ultimately, as the PCT application matures, you will have to file any desired national or regional applications from the PCT application.
If you are unsure of the countries you want to file in but know they lie within a region covered by a regional patent organization, you may file directly in that region, again within twelve months of the original U.S. filing. Or as noted you can file a PCT application within twelve months and then later pursue that into a regional application. The regional patent organizations include the European Patent Organization, (EPO) Eurasian Patent Organization (EAPO), and the African Regional Intellectual Property Organization (ARIPO). All but a few nations in Europe belong to the EPO, through which a European patent covering multiple countries can be pursued.
Except for the few patent attorneys from other nations and regions who have emigrated, an attorney in the U.S. is generally not permitted to represent clients in pursuing their patent applications overseas, so a foreign patent attorney(s) in each country or region of interest must be enlisted. I have a network of foreign associates selected over the years for competence, diligence, punctuality, and economy. I supply them with the strategy goals and substantive input on responding to foreign office actions, and they provide counsel on strategy and techniques applicable to their home countries and regions.
- In such a case it would also be advisable to seek a contractual arrangement precluding your vendor from disclosing confidential information and from manufacturing and selling the product elsewhere.
- See the last paragraph of the Is Your Invention Patentable over the Prior Art? Primer.
- Taiwan and Burma are not party to the international convention, but Taiwanese law allows priority claims within twelve months on applications filed in WTO member nations.
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