Should I Consider International Patent Protection?Way back in the early manufacturing days, like the 1980s, the issue
of international patent protection was pretty cut and dried for most inventors:
Why bother? For sales, unless you were an international corporation you probably
would focus on the U.S. powerhouse economy. And where to manufacture your widget
was obvious - with no sales planned overseas, it usually made sense to base
production in the U.S.
Not so anymore. About 25 years ago, manufacturing
in the United States shifted to Mexico. Then, within the past several years,
that manufacturing started going to China and the Pacific Rim. Today, in almost
every case coming my way, people seeking inexpensive manufacturing
for their inventions think first of places like China - not North
So whether you like it or not, and even if you have absolutely
no plans to sell your invention abroad, the new global realities of business may
by default give your invention an international connection needing international patent
As most of us know from Patent Law 101, the rights and
privileges granted under a United States patent extend only to this country's
borders and carry absolutely no weight elsewhere. Your rock-solid U.S. patent
will not prevent people in other countries from making, selling or using your
invention outside the United States. Likewise, almost every other country
operates the same way.
Unfortunately, the way patent law evolved, there
is no such thing as an international patent. If there were, many of my
lawyer colleagues in other countries would have no work, and I would not be able
to write off trips to see them.
Fortunately, there are several
international treaties that help inventors and businesses at least apply for
international patent protection. You don't need to know a lot about these, but
it is very helpful to know what they are.
The Paris Convention
Adhered to by some 140 countries including the U.S., the Paris
Convention for the Protection of Industrial Property in effect guarantees that
citizens of any one member country have the same patent and trademark rights in
all other member countries. However, it is very important to note, to actually get a patent in another country you still need to ultimately
file a patent application within each country you want protection.
other advantages, a chief benefit of the Paris Convention to inventors
everywhere is uniformity. For example, under the Paris
Convention, many countries allow you to claim priority from your U.S.
application for their utility patents - provided you do so within one year of your
original filing date in the U.S.
The Patent Cooperation
Despite the absence of an international patent, very
fortunately for you there is an international patent application. Based on the
Patent Cooperation Treaty that came into force in 1978, the PCT application
covers some 100 active member countries. By filing one international patent
application under the PCT, you can simultaneously start the process of seeking protection for an
invention in all member countries. Since all member countries are now quite accustomed to the PCT, you get the benefits of a streamlined process and a single priority date.
A most important fact about
PCT application is this: From the time of your initial PCT application filing
date, you get two and a half years to convert that application into a
utility patent application in the member countries.
Other essential facts:
Administered by the World Intellectual
Property Organization (WIPO), in Switzerland, the PCT's prominence is expanding.
In 2012, WIPO received more than 2.5M applications - twenty times that of 10
- To claim priority from the date of your earliest application (for example, a
U.S. patent application), the PCT application should be filed within a year of
that initial filing date.
- U.S. patent law gives you a one-year grace period in which to file a
patent application after public disclosure.
- Most countries, however, have no such grace period whatsoever, so
any prior public disclosure can invalidate a foreign patent.
- At the very latest, a PCT application must be filed before your U.S.
patent application is published.
Forms, filings and fees
Say that I've
convinced you to at least see what's involved to file an international patent
application. Compared with the U.S. process, the steps aren't all that different. Plus your PCT application can be filed in English, German or French. A great place to begin is WIPO's website
- www.wipo.int/index.html.en - and I've included a list of more links
about PCT applications at the end of this article. There is a tremendous amount
of detail at those websites, so patiently explore them.
written a PCT patent application you file that in the PCT division of the receiving office of the country you wish. For example, you could file with the PCT
division of our very own USPTO. Once filed, your application will get examined, and upon acceptance you thus automatically reserve the right to pursue patent rights in all member
countries' patent offices. As for costs, the PCT application filing fee is
usually less than $3,000 for a full utility patent - a lot more than the USPTO
filing fee. But, remember, for that single fee you start the process in all countries
represented in the Patent Cooperation Treaty at one time.
Try doing that before the PCT existed!
Keep in mind, what can get
expensive is when your PCT application converts to what we lawyers call the national phase. That is the phase in which you actually pursue a full patent in each nation you wish. Costs to expect include required language translation of the application, fees of patent lawyers in each country, and patent maintenance fees which can be more than those levied in the U.S.
International Patent Application Benefits
The biggest advantage of an international, or PCT, application? It buys you two and a half years - 30 months of precious time to decide which if any specific foreign patent protections make sense.
proceeding with the PCT and getting patent rights in other countries, you
might well establish licensing agreements with international corporations. Some
corporations may look more favorably on your invention if you can show patents
pending through the PCT. Others won't even talk to you unless you have at least
patent pending in other countries.
Most of all, it's like getting international 'idea
insurance.' A few months ago I read of a young, female American entrepreneur who took
her sure-bet invention to a Hong Kong toy manufacturer. Not wanting to spend
time and funds applying for patent protection, she was aiming for immediate
production and sales. While she gave the presentation of her life, the
manufacturer just didn't seem interested. Imagine her shock six months later
while attending a California trade show - there was her invention already
manufactured and being marketed by the very company she presented it
As the old TV commercial used to warn about blatant robbery, "Don't
let this happen to you." U.S. patent protection does chill the domestic bad
guys, but there are many others around the world ready to rip off your
idea and become instant competitors.
Should you seek international
patent protection? It may seem an expensive proposition, but it's
one more of those crucial business decisions you have to make. If you don't
decide - well, that itself is a decision.
For more on international patents
WIPO - www.wipo.int/about-wipo/en/gib.htm
WIPO - www.wipo.int/pct/en/forms/index.htm
USPTO - www.uspto.gov/web/offices/pac/dapps/pct/chapter1.htm
WIPO - http://pctgazette.wipo.int/
provides access only to the first pages of all PCT applications published since
January 1997; limited guest access is allowed).