Foreign Patents - Part I  

What You Need to Know.

The Question

A frequent question of first time inventors - "How do I get foreign patents?"

The answer is not simple. But let me try to make it somewhat simple.

When you file a U.S. patent, a clock starts ticking. In 12 months you have to do something in order to file foreign. You should in fact make your decision by about month 10 so you have time to do it right.

Why 12 months?

Let's first talk about why you have 12 months. In 1883 an intellectual property treaty called the Paris Convention was ratified by many of the world's industrialized nations. The Paris Convention allows an inventor in any member country to file a patent in their home country and then be able to file in other member countries 12 months later. The foreign filings will be assigned a priority date corresponding to the date of their home filing. This means that any information that becomes public after that priority date can not be used against those foreign filings. Or in patent parlance that public information cannot be part of the prior art for that patent.

The Paris Convention was a big step forward for inventors. Most inventors are reluctant to go to the big expense of filing both home country and foreign patents early in the patenting process. They don't yet even know if that have a valid patentable idea. Furthermore they don't know if there is a market for their idea. It is like playing poker and having to make all your bets before seeing all of your cards. And filing foreign patents is an expensive proposition. More on that later. The Paris Convention gave inventors a chance to see a few more cards before placing their big bet.

But only a few more cards. As the time needed to get a validity opinion from your friendly national patent office grew year by year, and the time required to commericalize ideas increased the 12 month reprieve was not that big of a benefit in most cases.

Enter the Patent Cooperation Treaty (the PCT)

In 1977 the PCT was signed by many countries. The PCT process basically allows you to put a fairly modest (~ $2800) ante into the poker game to buy time to see more cards before your big bet. Twelve months after filing your home country patent you can now elect to not file foreign patents but instead to file a PCT application to the World Intellectual Property Organization (WIPO). After filing a PCT application (which never becomes a patent - it is only a placeholder) the inventor now can delay the foreign filing decisions an additional 18 months.

Thus foreign patent filings can occur 30 months after the original home country filing. But all of the foreign filings will have the priority date of the original filing. Again the inventor is protected as to prior art dates, and the protection is all the way back to the filing date in the home country.

In Foreign Patents - Part II we will talk about why the foreign filing decision is a tough one for small companies.


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Mike Ervin
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