How do U.S. Inventors Get Foreign Patents?
Not only do we help our clients get U.S. patents, but we help them get patents in places like Europe, Canada, Japan, China, Australia, Mexico, and Brazil. In order to prosecute a patent in a foreign patent office, we have to retain counsel in the country of interest. We review the examiner’s reports (which we call “office actions”) and collaborate with our associates on a response strategy that is tailored to our client’s goals and consistent with the country’s laws and practice. Essentially, we are the “hub” for all of our clients’ filings and act as the quarterback to make sure that the prosecutions of our clients’ foreign applications are aligned with their strategies.
There are two routes that are typically followed by U.S. inventors seeking foreign patents: The “direct filing” route and the “PCT” route. The direct filing route refers to filing a patent application in the language of the country of interest and in that country’s patent office.
The “PCT” route refers to the “Patent Cooperation Treaty.” Currently there are 158 member states to the PCT. The PCT allows you to file one “international application” that is used as your application in all of the PCT member states of interest. Chief among the benefits of the PCT is that you can defer beginning prosecution in any of the member states until 2.5 years after your earliest U.S. filing date. This allows you to see how your U.S. prosecution is progressing before deciding exactly where you want to get a patent and incurring translation and prosecution costs.
If you are considering more than one or two foreign countries, and especially if you do not know which ones you will ultimately file in, the PCT is usually the most cost-effective route. However, if you only want to file in one or two countries, and if you know which countries those are, the PCT is often better. The PCT also provides a patentability search and a non-binding opinion on patentability. However, it is advisable to confirm whether all the countries you are interested in are actually PCT member states.
To the uninitiated, published PCT applications look like patents. They are not, and there is no “international patent” that covers the world. You have to get a patent from the country you want patent rights in, with the exception of Europe. In Europe you can get a single patent that is enforceable in several countries (in the case of the unified patent) or which can be subsequently “validated” for enforcement in the countries you select (in the case of a “traditional” European patent). In the case of either the PCT or a direct national filing, you will typically want to file within one year of your U.S. filing date.
Foreign patenting can be very expensive, especially if you’re seeking patents in non-English speaking countries that require full translations of patent applications. So, it pays to be judicious in your selection of countries. There are a number of factors to consider when selecting the countries in which you will seek patents, including the robustness and fairness of the country’s patent enforcement systems, how likely the country is to grant strong, broad claims that are difficult to design around, and the market for your patented products in that country.
Some foreign countries have “absolute novelty” laws, meaning that if you disclose your own invention even one day before filling for a patent application, you may lose your patent rights for that invention in those countries. So, it pays to talk to your attorney earlier rather than later about your foreign filing plans.