International Patents: Managing Patent Rights Outside of the United States
It is a common misnomer that you can apply for an international patent. Patents must be filed, examined and issued in each country where patent protection is sought. However, the right to file a foreign patent application is automatically preserved by treaty for 12 months. This time can be extended by a PCT request for up to 30 months. During this time, you can determine whether patent protection may be valuable to pursue in any of the participating foreign countries.
A US patent application provides a licensable, transferable property right in many foreign countries during the first 12 months. Patent rights under the U.S. application can be sold, transferred or licensed in any country that participates in international patent treaties.
Before the first 12 month expire, these patent rights may be extended for up to 30 months by filing a Patent Cooperation Treaty (PCT) request. The PCT request will be published 18 months after the original patent application filing date. About the same time, you will receive an International search report. The International search report will be a good predictor of your U.S. search. You may file a response to the International search report, including possibly amendments.
Before the first 30 months expire, you must file a patent application in each country where you will seek patent protection. You may file a foreign patent application through your U.S. patent attorney, who will correspond with foreign counsel to secure foreign patents. To file a patent application in a foreign country, the patent application must be amended to conform to local patent laws. The patent application may go through an examination process, similar to the US examination system. The patent application may be subject to annuities or VAT taxes. The procedures, costs and rights vary from country to country.
Other articles that may be helpful:
- Patent Rejections, February 24, 2008: After you file your patent application, it will wait for between 12 and 36 months before the US Patent Office assigns an Examiner to review your application. Typically, the Examiner will reject your entire patent application. This formal rejection is known as an “office action.” Office actions require a formal response within 3 months, but...
- Prior to Filing: the Secrecy Problem, February 24, 2008: To encourage inventors to quickly file patents, many foreign governments require that the inventor file a patent application prior to any of these events:
the first public use of the invention;
the date of publication of any description of the invention; or
the date of any sale, or...
- Time is of the Essence: Speedy filing best preserves your patent rights., February 24, 2008: Filing a patent application has a number of legal effects.
Competitor’s activities, which would have been Prior Art before your patent application was filled, may eventually be found to infringe your patent.
The patent application is a licensable, transferable property right.
Patent rights...
