Professor Demchick's Patent Services
Paul H. Demchick, United States Registered Patent Agent
(United States Patent and Trademark Office Registration 52,808)
Professor Demchick's Blackboard
Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.
PATENT PROTECTION OUTSIDE OF THE UNITED STATES
United States Patents are, essentially, the right to forbid others from making, using, offering for sale, or selling the invention in the United States. Almost every country has patent laws. However, to be protected in other countries, you must obtain a patent in each of those countries. Applying for a patent in every country in which that is possible would be incredibly expensive. The costs of government fees, local legal representation, translation costs, and other expenses would be enormous. However, it is worth considering in which, if any, countries outside of the United States you wish to seek protection. Factors to consider for each country include:
How expensive will it be to get patent protection there? (government fees, legal representation, translation costs, others)
How strong are patent rights there? (Each country has its own laws about exactly what rights a patent-holder has.)
How hard would it be to enforce patent rights there? (For starters: Would you know if someone was infringing there?)
How big would the market for the invention be there? (Economics, climate, culture are among the many factors to consider. )
It is frequently not worth applying for patent protection outside the United States. However, there is a painful part to this. Hypothetical:
You patent your invention in the United States. A few years later it is really catching on. You decide it is worth considering foreign patent protection. Sorry, it is too late.
You have a limited time in which to file in each country.
Designing an appropriate multinational filing strategy is complicated, and is highly dependent on the particular needs of the applicant. In my practice, that is one of the things that I discuss with each client who has some interest in protection beyond the United States. There are two main approaches worth considering if you will be filing (or have recently filed) a patent application in the United States, and wish to seek protection in other countries:
Utilizing the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY. Most countries, including the United States, adhere to the Paris Convention. Under the Paris Convention, each country guarantees to the citizens of the other Paris Convention countries the same rights in patent matters that it gives to its own citizens. If someone first files a patent application (for a utility patent, the most common type of patent) in the United States and then files a patent application on the same invention in one or more Paris Convention countries within one year, the foreign applications are treated as though they were filed on the same day as the patent application filed in the United States. The same basic rule applies to design patents except the time limit is six months. A list of the Paris Convention countries is below.
Utilizing the PATENT COOPERATION TREATY. Most countries, including the United States, adhere to the Patent Cooperation Treaty (PCT). It allows the filing of a single International Patent Application. However, there is no such thing as an international patent. The International Patent Application, among other things, allows you to keep your options open to file in any PCT countries you wish as late as 30 months from the international patent application filing date (or the United States patent application filing date if you claim benefit of that filing date). This often allows you to get a much better sense of in which countries it is worth filing. It also allows you to have time before the biggest costs occur. A list of the PCT countries is below.
If I may be of service with your patent protection needs, please do not hesitate to contact me.
CAUTION: Under United States law, one may not file a patent application in another country on an invention made in the United States unless and until the United States Patent Office issues a foreign filing license. This is usually received with the official filing receipt for a United States Patent Application.
CAUTION: There are things you should refrain from doing (prior to the filing of a patent application) with any invention you are considering patenting. United States law allows an inventor to sell the invention or publish information about an invention and still file a patent application within one year. HOWEVER, very few countries have that one year grace period. If you are considering patenting in countries outside of the United States, file a United States Application before ANY publication or sale of your invention.
Paris Convention countries as of 11 April 2008 (information from the World Intellectual Property Organization):
Albania Algeria Andorra Antigua And Barbuda Argentina Armenia Australia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium Belize Benin Bhutan Bolivia Bosnia And Herzegovina Botswana Brazil Bulgaria Burkina Faso Burundi Cambodia Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Democratic Republic of the Congo Denmark Djibouti Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea - Bissau Guyana Haiti Holy See Honduras Hungary Iceland India Indonesia Iran (Islamic Republic of) Iraq Ireland Israel Italy Jamaica Japan Jordan Kazakhstan Kenya Kyrgyzstan Lao People's Democratic Republic Latvia Lebanon Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Malawi Malaysia Mali Malta Mauritania Mauritius Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Nepal Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Pakistan Panama Papua New Guinea Paraguay Peru Philippines Poland Portugal Qatar Republic of Korea