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International Patent Laws INTERNATIONAL
PATENT APPLICATIONS There are three treaties that affect rights of United States Inventors Seeking International Patents. The Paris Convention, the Patent Cooperation Treaty (PCT), and the European Patent convention (EPC). The Paris Convention is a treaty that provides reciprocal patent filing rights between various countries. Members of Paris convention are known as convention countries. An inventor who relies on Paris convention treaty to file for an International Patent must file a Patent Application in each convention Country. The US inventor can retain the filing date of his or her US Patent Application in the convention country as long as the Patent Application filed in the convention country within one year of the US Patent filing date. A US inventor filing in a non-convention country must file the foreign application before publishing or selling the invention. Therefore, publication or sale of an invention could preclude the inventor from obtaining Patent Rights in many foreign countries. Does applying for patents in other countries apply to my invention? If your invention is likely to be adopted in other countries, you should consider protecting your invention in those countries in addition to applying for a patent in the United States. Your United States patent will only protect you against others making, selling, or using your invention within the United States. Your United States patent will not enable you to prevent others from making, selling, or using your invention outside the United States. Filing an international patent application will protect your invention from being adopted in other countries. Moreover, an international patent may expand the potential market for your invention. When should I file my international or foreign patent application? Foreign patent protection will enable you to prevent others from profiting from your idea in foreign countries. The United States is a member of the International Convention for Protection of Industrial Property, and therefore a United States inventor may obtain the benefit of their U.S. filing date in any adhering foreign country. However, to take advantage of this right you may file an International non-provisional patent application known as a “PCT” application (Patent Cooperation Treaty application) designating the foreign countries where protection is being sought within 12-month deadline calculated from the date the United States utility Patent was filed for. If you apply for a design patent, you are advised to file corresponding foreign patent applications within six months from the filing date of your U.S. patent application. Accordingly, you should consider filing for a PCT application as soon as possible in order to allow enough time to prepare the foreign application. Where should I file my international or foreign patent application? The World Intellectual Property Organization located in Geneva, Switzerland administers the PCT application. However, PCT applications filed by United States Residents are filed in the United States Patent and Trademark Office. The international application is treated as confidential and third parties are not permitted to have access to the international application, unless requested or authorized by the applicant, before the date of international publication. Designated Offices are, however, permitted to publish the fact that they have been designated, together with a limited amount of bibliographic data. What is the difference between filing multiple foreign patents and a single PCT application? If you are not able to undertake multiple national foreign filings immediately, a PCT application is a good solution. When initially filing a PCT application, you do not need to designate the specific countries where foreign protection is being sought for up to 20 months, which may be extended to 30 months from your earliest relied on U.S. patent application filing date. This gives you up to 30 months to actively market your invention and decide which countries should be designated on your application. In some cases a foreign manufacturer may be interested in obtaining information from a United States inventor. If you have patent rights in the foreign country, you will be able to write a contract that has a broad coverage. If I need to apply for patents in multiple foreign countries would filing a PCT application save me time and money? You save money by filing a PCT application because you will file one application—the international application—in one place, in one language and pays one initial set of fees, which without the PCT would require separate applications for each country or region. In summary, if needed, to protect your invention in several foreign countries, instead of filing a patent application in each and every foreign country, file a PCT application instead. The PCT application will save you time, work, and money. What happens when I file my PCT application? Once you file a PCT application, the application is searched for novelty and non-obviousness by an International search authority. An International Preliminary Examination Report is prepared based on the international search. Before the International Preliminary Examination Report is finalized, you may amend your PCT application, if necessary. Amending a single PCT application is better than having to amend numerous patent applications in various countries later. The PCT application will go through other various stages until the patent is finally granted. |