Patent Article by William S. Ramsey, P.C.

OBTAINING A PATENT IN A FOREIGN LAND

You new product or process looks like it will be commercially successful, and you have timely filed a U.S. Patent application. Inquiries have arrived from manufacturers in your industry in Canada and France. Will your U.S. patent application protect you beyond the borders? What about obtaining a patent in a foreign land?

A U.S. patent protects your invention only within the U.S. and its territories. Without your permission, no one can make, use, sell, or offer to sell your patented invention, or a product or service using your patented process, in the U.S. and its territories. This also means a product made in a foreign country is protected by your U.S. patent if the maker attempts to import and sell the product in the U.S. (and territories). However, your U.S. patent does not protect against a person making and selling your invention in a foreign country, such as Canada or France. Patent protection in these countries requires a Canadian or French patent.

It is possible to file individual patent applications identical to your U.S. application in each foreign country in which you desire a patent. These applications must be made within one year of filing the earliest U.S. application. This means, within one year of filing a U.S. provisional application, if a provisional application is used. This requires the relatively expensive process of translation and filing in individual countries at this early point in product development. Filing in individual countries within one year of the earliest U.S. application is recommended only if patents in a few foreign countries are desired and these countries can be identified quickly.

A more common process is to make a Patent Cooperative Treaty (PCT) application within one year of the earliest U.S. application. By filing a single PCT application and doing some additional formalities you can preserve your right to file patent applications in some 83 foreign countries, from Antigua to Zimbabwe. Major trading partners such as Canada, Japan, Mexico, and United Kingdom are included. This procedure delays the deadline for filing individual foreign patents in individual countries to at least 30 months from the filing of the first U.S. application. A PCT application may be filed in English. Use of the PCT delays the substantial costs for individual applications and translations until the inventor has a better idea of the countries in which foreign patents make business sense.

Another advantage involves the use of regional applications, such as the European Patent Office (EPO). A single EPO application is examined by the EPO and, when found patentable, the patent will issue in any or all of the 19 European Patent Convention and PCT countries. Again individual filings (often with required translations) must be made in each individual country.

I recommend clients who have any interest at all in foreign patents file a PCT application citing all available countries. These clients can take advantage of the 30 month delay offered by the PCT to decide upon which foreign countries offer the best business opportunities. Then they file applications in the specific countries which offer the best business opportunities. My clients often make eventual filings, for example, in Canada, EPO, Japan, Australia, and Korea.

The substantial requirements for patentability in the various countries are very similar but not identical. Objectively, it makes little sense that each country should require the filing and examination by patent examiners of each application, even if that application previously has undergone examination in several other countries.

However, even small differences in patent laws are important to the countries involved, and the whole issue is tied up with questions of sovereignty and national identity. Process is being made toward a universal patent application valid in all countries. At the moment your best bet is to use the PCT process.

William S. Ramsey 410-740-2225

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