Obtaining Foreign Patents
A patent issued in the United States does not give you intellectual property rights in any other country. The United States patent only gives you the right to stop other people from making, selling, or using your patented technology in the United States. However, the US patent can also stop the import of your patented technology to the United States, even when the entity is making an infringing product perfectly legally in their country. If you want Patent Coverage in ANY OTHER country, you have to apply for that patent in each country or at the appropriate regional patent office.
International Patent Law is governed by treaty amongst 181 countries / entities. Countries that agree and sign onto a treaty are called contracting states. Also some Patent Law Treaties allow contracting states to sign on for only some of the provisions outlined in a standard treaty and not all of them.
There are two major treaties that deal with International Patent Law. First is The Paris Convention. Once an application for a patent is filed in one of the contracting states, this treaty gives the ability to claim a priority date to that first patent application in any of the other contracting states. This is very helpful if there is an intervening patent application for the same invention. A filing of an application under the Paris Convention is usually referred to as a national filing. The benefit of the Paris Convention is that it gives the ability to grant that application a priority date.
PCT is the other major international treaty. PCT is short for Patent Cooperation Treaty. WIPO, the World Intellectual Property Organization, oversees the PCT patent process. This treaty created one entity to file and search an application for all the contracting states. The PCT does NOT grant any patents. An applicant still has to do national filings to actually get Patent protection in different countries.
Even though eventually an applicant would still have to file or more national or regional patent applications, the PCT provides great advantages. One of those advantages is a central process with only one filing in only one language. Another advantage of the PCT is the ability to wait 30 months from the first filing before going into the national phase. This defers the cost for 30 months, hopefully giving the applicant time to evaluate how the invention is doing and where it would be most advantageous to have national patents. Still further, a patent search will be conducted and the applicant may amend their claims accordingly before having their application prosecuted in many countries, thereby potentially decreasing the cost significantly.
In very basic terms, the PCT Application works like this - Traditionally, an applicant files a base application in one of the contracting states such as the United States, for purposes of this explanation. (One may, however, file a PCT application first and skip a national filing of their patent application.) Before the one year anniversary of the United States filing, an applicant would file the PCT application. All contracting states of the PCT are included in a single fee. Next the applicant would receive an international search report and written opinion. The next step is the international publication. There is an option at this point in the process to get a supplementary international search. There is also another option of an international preliminary examination. Finally, at 30 months from the United States filing date, the PCT application goes to national and/or regional Patent Offices. There is a deadline for the completion of each of these steps. In addition, at each of these steps there are decisions to be made on how to proceed.
While this may appear to be a complicated process, it is easily handled by a knowledgeable Patent Attorney with expertise in this area. If you are considering filing any International Patent, we would be happy to assist you.