International Patents

With the global marketplace taking center stage more than ever before, many companies are exploring ways in which they can leverage their innovations to spur growth in different parts of the world.  Whether it is protecting R&D in one country while protecting product sales in another, a common question is how to protect one’s inventions in a way that is not just limited to one country, such as the United States.

If you are looking to enter a foreign market, you may be asking, “Will my U.S. Patent offer global protection?” The short answer is NO.  The rights granted by a U.S. patent extend only throughout the United States and have no effect in a foreign country. This means that your invention, although patented in the U.S., can be copied and marketed in other countries, leaving you without legal protection or recourse against “copycats.” As such, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices.

Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.

Currently, there is no such thing as one global patent that will protect an invention throughout the world.  In essence, each country/region has its own particular patent laws and regulations, which span the range of being very similar to very different from other countries/regions.  Notwithstanding some notable exceptions such as Europe, a patent application for the same invention would eventually need to be filed in each of the individual countries of interest to an inventor.

Patent Ingenuity is a patent law firm with extensive experience in coordinating foreign patent protection for its clients in a wide range of foreign countries.  Although the firm is based in the U.S., it has access to a global network of patent firms throughout the world with which it works to ensure that clients may easily file for patents in almost any industrialized nation of their choosing.   

Also, a patent applicant does not need to know every country of possible interest at the start of the patent application process. 

At Patent Ingenuity, there is a 3-step process that will be used by a patent attorney experienced in coordinating international patent filings. 

Filing in the U.S. is typically a good starting point for a number of reasons.  First and foremost, the U.S. is the largest economy in the world, thereby often having some connection (R&D, manufacturing, sales, etc.) to a product that is patent pending or a patented product.  The reality is that both domestic and foreign companies alike are often most interested in protecting activities performed in the U.S. over other countries/regions. 

Secondly, various mechanisms allow for priority claims to a patent application filing with the United States Patent & Trademark Office (USPTO).  For example, if your patent lawyer filed a U.S. patent application today, that filing date may potentially be used for a subsequent foreign filing in Europe via the European Patent Office (EPO) eight months later.  As such, the European filing is treated as if you filed it today even though you did not actually file it until 8 months from now. 

Obtaining a retroactive priority claim, which allows the U.S. filing date to be the “international filing date” for a foreign patent application, may be crucial for your invention being protected outside of the United States.  For example, if someone else published an inventor’s idea on the Internet in between the U.S. filing date and the actual European filing date (within the 8 month time period in the example above), the inventor’s ability to claim retroactive priority to the U.S. filing date may allow the inventor to prevent that article from being considered “prior art” that would otherwise be used by the EPO to reject the European counterpart patent application.

Thirdly, the substantive patent requirements in the U.S. tend to be some of the strictest in the world.  As a result, the bulk of the substantive work done in the U.S. may serve as a basis for foreign patent applications.  As just one example, the U.S. tends to have somewhat stringent requirements for software patent applications.  Ostensibly, if a software patent application is written to fully comply with U.S. patent laws, there is a significant possibility that such patent application will be robust enough to serve as the basis for most foreign patent applications.  In other words, starting with a U.S. patent application allows a patent applicant to avoid starting from scratch in each individual country on a substantive basis.  (That being said, there are still numerous formal, and some substantive, requirements in various foreign countries that are typically best dealt with at the time of a foreign patent filing, rather than the U.S. filing.)    

To summarize, at Patent Ingenuity, a patent attorney experienced in both filing U.S. patent applications and coordinating foreign patent filings can take the first step for you in the international patent application process by first filing a U.S. patent application with the USPTO.  By having a thorough understanding of how to prepare a patent application to not only meet USPTO guidelines, but also provide a substantive basis for foreign filings, the patent lawyer develops a global patent strategy for clients to leverage a company’s business goals on a worldwide scale.

Although there is no such thing as a global patent, there is actually what is called an “international patent application,” often referred to as a Patent Cooperation Treaty (PCT) application.  The PCT is essentially an international procedure falling under a treaty ratified by over 150 countries, which is administered by the World Intellectual Property Organization (“WIPO”).  A PCT patent application may claim priority to a previously filed U.S. patent application if filed within one year from the U.S. filing date.  As a result, the international filing date of the PCT patent application may essentially be the U.S. filing date.

From a practical perspective, the main benefit to filing a PCT patent application is the ability to delay filing in specific foreign countries/regions for up to 30 months from the international filing date.  This delay may allow a company (Startup or Enterprise) to best determine whether a foreign marketplace justifies a foreign filing.  For example, a company may start selling the product, which is the subject of the international patent application, as “patent pending” in Europe even though a PCT application has been filed without any direct filings in Europe at that time.  The company may then take up to 30 months to determine if there is significant demand for its product in Europe, and then determine whether or not to file directly in Europe.  In essence, the PCT is a placeholder patent application that allows U.S. patent applicants (or others) to explore business opportunities throughout most industrialized countries in the world without first committing to patent filings in those countries.

Without delving into the vast intricacies of PCT procedures, which an experienced patent attorney at Patent Ingenuity can perform on your behalf, the PCT procedure can be thought of as having an International Phase and a National Phase.

The International Phase allows the U.S. patent applicant to file a PCT patent application claiming priority to a previously, or simultaneously filed, U.S. patent application.  During the International Phase, the patent applicant must comply with certain WIPO procedures for meeting various PCT requirements.  Various items will then be sent to the patent applicant by an authorized International Searching Authority (ISA), such as an International Search Report (ISR) and an International Preliminary Examination Report (IPRP).  An analysis of such documents, and how they affect your patent rights, may be performed by your patent attorney.

At the 30th month from the international filing date, the patent applicant typically has to decide in which countries/regions patent filings should be performed.  Such “national phase” filings will be able to claim retroactive priority all the way back to the international filing date, which in the example above would be the U.S. patent application filing date.  If a patent is granted via the national phase, it will be a patent issued directly from the country/region in which national phase was filed, not WIPO.  To reiterate, there is no such thing as a global patent; a PCT patent application is a unified approach to obtaining “patent pending” status on an international basis in over 150 countries with a single placeholder filing that must eventually be followed up with a national phase filing in a specific country/region. 

As an alternative, some patent applicants forego the PCT process entirely and file directly in foreign countries of interest.  For instance, the Paris Convention is a treaty, having over 175 member nations, which allows for direct foreign filings that retroactively claim priority to the U.S. patent application filed previously within one year.  This approach is in contrast to the PCT patent application, which allows for up to 30 months of delay, but may be well suited to patent applicants who already know what foreign marketplaces will be best for their products and services.  To summarize, step 2 may potentially be avoided, but such a strategy will typically depend on a variety of factors.

A registered USPTO patent attorney at Patent Ingenuity can be available to consult with you regarding preparation of a U.S. patent application and a PCT patent application that may be filed with the USPTO as the receiving office (RO) for WIPO.  Even if you choose the direct filing approach without a PCT, a patent lawyer at Patent Ingenuity can prepare a U.S. patent application so that the substance may be used for filings by the network of global law firms it works with throughout the world.