Foreign Applicants for U. S. Patents

Foreign Applicants for U. S. Patents. Lets first talk about the fundamental question - can a foreigner easily file for a US patent? The answer is pretty straightforward - yes. The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a patent on the same basis as a U.S. citizen. Having said that there are a number of items that must be adhered to if you are an applicant form a foreign country (that is foreign to the United States).

What are the requirements of a declaration under US patent law?

In the US Patent Office an application for patent must be made by the inventor and the inventor must sign the oath or declaration (with certain exceptions). This differs from the law in many countries where the signature of the inventor and an oath of inventorship are not necessary.

Without getting into too much legalese - the law states that foreign applicants must sign a document that:

    Identifies each inventor by full name;

    Identifies the country of citizenship of each inventor;

    States that the person making the oath or declaration believes the inventor(s)s to be the original inventor(s) of this invention.

In addition the document should

    Identify the application being talked about;

    State that the person making the oath or declaration has reviewed and understands the contents of the application;

    State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability.

Related to this last requirement - foreign applicants should submit an Information Disclosure Statement (IDS) that lists the prior art that the applicant feels is closest to applicant's invention. This is usually not required in most countries outside the United States.

How to do this

All of this sounds complex and legalistic and in fact it needs to be done correctly. But it does not require you to hire an expensive contract lawyer to write it. In fact the patent office provides a boilerplate form [ PTO/SB/01] to ensure it is done correctly. The form can be found on the patent office web site in their long list of forms.

There is another boilerplate form [ PTO/SB/01] for the IDS. The form can be found on the patent office web site in that same long list of forms.

Each of the requirements listed above are included in these forms. It makes it possible for your patent practitioner to complete the Declaration requirements accurately and hopefully at a low cost.

As an alternate the applicant can submit an oath instead of a declaration. I do not recommend this. it is quite complicated, requiring that you make the oath before a diplomatic or consular officer of the United States or before an officer in your country authorized to administer oaths. Forget about it - just download the PTO/SB/01 form and use it.

Who Can Represent You?

A foreign applicant may be represented by any patent attorney or agent who is registered to practice before the United States Patent and Trademark Office. If you have already applied for a patent in your home country your friendly patent attorney or agent probably already has a relationship with a U.S attorney or agent who will represent you. If not you need to hire such the U.S. attorney or agent yourself. You can shop around for an attorney/agent who practices before the patent office at this link.

Important Legal Point

No U.S. patent can be obtained if the invention was patented abroad before applying in the United States by the inventor or his/her legal representatives if the foreign application was filed more than 12 months before filing in the United States. Six months are allowed in the case of designs. This is covered in 35 U.S.C. 172.

If filed within those 12 months though then the foreign applicant receives similar privileges to citizens of the United States in that the application will have the same force and effect for the purpose of overcoming intervening acts of others as if filed in the United States on the date on which the application for a patent for the same invention was first filed in the foreign country. This is called the right of priority.

The applicant can (and should) claim priority of this earlier application under 35 U.S.C. 119(b) to the foreign application. A copy of the foreign application certified by the patent office of the country in which it was filed is required to secure this right of priority.


Foreign Applicants for a U.S. Patent
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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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