If you have a patentable invention and some (or all) of your competitors are located outside of the United States, your attorney may advise you to file for various international patents in order to protect your invention in the foreign countries where you are doing business or selling your product.
It’s important to note that a patent granted by the United States Patent and Trademark Office is only good in the United States. Unfortunately, many foreign countries (such as China) have reputations for infringing on the IP of others, so it may be necessary to apply for patent protection in these additional countries so that you have the ability to sue for equitable or financial damages if indeed your patent is infringed upon.
If you are considering filing for patent protection internationally, here are the top nine things you should know going into the process:
- If your invention is made in the US you must obtain a foreign filing license prior to filing internationally for patent protection. Foreign countries may have their own laws regarding the filing of patents from any inventions made in their country.
- Unlike the US, most foreign countries require absolute novelty for patent registration. This means that if there is a disclosure (use, sale, or publication of information related to the invention) of the invention prior to the filing of a patent application, no patent can be obtained. So, if you are considering seeking international protection, you must not disclose your invention prior to filing an application.
- There is no single international patent though there is a Patent Cooperative Treaty (PCT) application, which is an international patent application administered by The World Intellectual Property Organization (WIPO). The PCT provides an applicant with a method to obtain a priority date for patent protection of an invention simultaneously in numerous countries by filing a single PCT application instead of filing several separate national or regional patent applications.
- Once a PCT application is filed WIPO will perform a search and preliminary examination of the PCT, but the granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”. To enter the national phase of a PCT you must file the application with the national office and pay the specific countries’ filing fees.
- If you are doing business in one of the 45 nations that are not covered by a PCT application, you will need to work with your attorney to apply for patent protection individually in each applicable country.
- A PCT application for an international patent is for utility patents only. If you have a design patent that you’d like to protect, you will need to look to Hague – The International Design System or apply for a patent in each individual country where you’d like protection.
- The intellectual property laws of each country differ across the globe. As such, you may want to work with your attorney to prioritize where you will file for patent protection to ensure that you are spending your time and financial resources wisely.
- If you first file in the US, you may still file a PCT. Your PCT application must be filed within 12 months of filing your patent with the United States Patent and Trademark Office. If you are applying for patent protection directly in another country, you’ll need to follow that nation’s timetable when working through the patent application process.
- If you are only concerned about patent protection in the European Union, you can file with the European Patent Organization (EPO) which will provide you with patent protection in all European member states if you are approved.
Filing for a patent in any nation is an extremely complicated and detailed process. No matter which country you are seeking patent protection in, be sure to work with an experienced patent attorney who can help you work through the process as quickly and cost-efficiently as possible, while guiding you toward the best path to securing international patents overseas in a way that truly maximizes your resources and ROI.
If you have further questions or you are ready to get started, we invite you to contact our intellectual property and patent attorneys at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.