Foreign Patent Applications

Foreign Patent Filing Strategy

Many new inventors want worldwide patent protection for their invention. However, truly worldwide protection is expensive, and is unnecessary for most inventors. Many inventors are best served by focusing their resources on US patent protection and commercialization of their invention. Even if the invention is manufactured in a foreign country, a US patent enables the patent owner to act to stop importation of the invention into the US.

Foreign filing can be advantageous in the following circumstances.

  • You intend to market your product in specific foreign countries.
  • You intend to manufacture your product in a specific foreign country
  • Competitors who may attempt to manufacture similar products are located in specific countries.

Keeping in mind the above factors as well as the cost and the need to preserve resources for commercialization, specific countries of interest can be identified and prioritized.

US patent applications are published 18 months after their earliest filing date. Nonpublication of the application can only be requested if you do not plan to file foreign patent applications. Once a US patent application is published, it is prior art against any improvements the inventors may wish to patent beginning one year from its publication date. If you expect to continue developing your invention, you may wish to consider avoiding foreign filing so that a nonpublication request can be filed when you file your US patent application.

Please do not hesitate to contact me to discuss your foreign filing strategy.

Foreign Filing License

Patent applications for inventions which were invented in the United States may not be filed in any foreign country prior to six months after the filing of a United States patent application unless a foreign filing license is granted by the Commissioner of Patents. 35 U.S.C. §184.

In most instances, foreign filing licenses are granted relatively quickly, and are indicated on the official US filing receipt. Some inventions require further review to determine whether any national security interests are implicated. If the US filing receipt does not indicate that a foreign filing license has been granted, then the inventor must wait at least six months before filing foreign patent applications. If no secrecy order has been received after six months, then the inventor is free to file foreign patent applications.

International Patent Application Process

Patent Cooperation Treaty

In most foreign countries, public disclosure of an invention prior to the filing of a patent application results in loss of the right to a patent. However, under the Patent Cooperation Treaty, inventors who have taken the appropriate steps may claim the benefit of earlier patent application filing dates in other countries.

Within 12 months of filing the initial US patent application, an international application is filed under the Patent Cooperation Treaty, claiming the benefit of the filing date of the US patent application. This international patent application is known as a PCT application. If a provisional patent application has been filed, then the US utility patent application and PCT application are typically filed simultaneously.

Once the PCT application is filed, an international search is performed, and a preliminary opinion on patentability is also provided. This international search and opinion, as well as any references cited in the report must be disclosed to the US Patent and Trademark Office for consideration during examination of the US patent application.

Within 19 months of the earliest filing date, a demand for international preliminary examination may be filed. The claims of the PCT application may be amended to address the issues raised in the international search and written opinion. An international preliminary examination report will be issued. Although the international preliminary examination report is not binding on any country, obtaining a favorable report at this stage can simplify the process of obtaining patents in individual countries during the steps described below.

National Phase Patent Application Filing

Patent applications filed in most countries must be filed within 30 months of the earliest filing date in order to claim the benefit of the PCT application. The European Patent Office, Australia, and South Korea require filing national phase applications within 31 months of the earliest filing date.

Filing patent applications in individual countries or in the European Patent Office requires hiring patent attorneys or agents who are admitted to practice in the appropriate jurisdictions. I am acquainted with patent law firms in various countries, and can usually connect you with lawyers in those jurisdictions who are capable of performing good work and providing reasonably accurate cost estimates.

If the US Patent and Trademark Office indicates that at least one claim in the US patent application is allowable, then claims corresponding to the allowed US application can be given fast track examination in many foreign patent offices through the Patent Prosecution Highway.

Countries Which Have Not Signed The Patent Cooperation Treaty

Some countries, including Taiwan, have not signed the Patent Cooperation Treaty. Patent applications in Taiwan must be filed within 12 months of the earliest US filing date. Typically, a PCT application and a Taiwanese patent application are filed simultaneously.

International Design Patent Applications

Design patent applications in foreign countries must be filed within six months of the earliest filing date. Design patent applications are typically granted foreign filing licenses when the official filing receipt is provided since they would rarely raise national security issues.

Design patent protection in many European countries can be obtained through a single design patent application filed with the European Community Intellectual Property Office.

Filing foreign design patent applications requires hiring attorneys who are admitted to practice in the relevant jurisdictions.  I have worked with patent attorneys in several countries who I can recommend.  Please do not hesitate to contact me with your design patent questions.