Filing for a Patent Overseas
When an inventor files for a patent with the United States Patent and Trademark Office (USPTO), his or her invention is only protected in the United States. If a person wants to receive patent protection for his or her invention overseas, they will need to apply for a patent in each country. Nearly every country around the world has its own laws governing patents and an inventor must comply with the requirements of each country when filing a foreign patent application.
Under the Patent Cooperation Treaty (PCT) an inventor also has the option of filing an international patent application, which provides simultaneous patent protection in countries that are a party to the treaty. Any country that was a party to the 1883 Paris Convention for the Protection of Industrial Property is eligible to join the PCT. This type of application can be filed with the International Bureau of WIPO in Geneva or in the national patent office of the inventor's country of residence or citizenship.
Foreign Patent Laws
The patent laws of foreign countries are different from U.S. patent laws in various ways. For example, most foreign countries bar the right to a patent if the invention is published before the date of the application; and if patent rights are granted, many countries require maintenance fees. Many countries also require that the patented invention be manufactured in their country after a certain period of time; and if this doesn't happen, the patent will become void. In most countries, a patent may also be subject to the grant of compulsory licenses.
The Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) centralizes filing procedures and standardizes the application format, thus making it easier to apply for patent protection in multiple countries. As long as an applicant files the international application in a timely manner, he or she receives the same filing date in each country designated in the international application. If an applicant files for patent protection under the PCT within one year of the U.S. filing, he or she has up to 30 months (from the U.S. filing date) to file in any of the other countries that are parties to the treaty.
If you're interested in filing for a patent overseas, and the countries you would like patent protection in are part of the PCT, filing under the PCT procedures has many advantages. For example, an applicant has more time to decide if he or she would like to pursue patent protection in a foreign country, and has more time to take the steps that are necessary to acquire foreign patent protection. In addition, if an applicant uses the patent application that is set forth by the PCT, a designated Office can't reject the application on formal grounds during the phase of national processing.
U.S. Requirements for Filing a Patent Overseas
When an invention is made in the United States, the law requires that a person obtain a license from the Director of the USPTO before applying for a patent in another country. This license is required in two situations:
- If the foreign patent application will be filed before filing one in the U.S., or
- If the foreign patent application is filed less than six months after filing the U.S. application.
Six months after filing for a patent in the U.S., a license is only required if the invention has been ordered to be kept a secret, in which case, the person must obtain consent from the Director before filing for a patent overseas.
Getting Legal Help
If you have questions about filing for a patent overseas, or would like help determining if your invention qualifies for patent protection and filing a patent application in the United States, it's in your best interest to contact an experienced patent attorney in your area.
You can visit FindLaw's Intellectual Property section for more information and resources related to patents, and other forms of intellectual property.
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