Patent Treaties and Foreign Patents

Patent treaties. In our discussions on filing foreign patents we briefly alluded to the patent treaties that define how foreign patents can be filed. But for those who want to know more let's talk about this in some more detail.

The rights granted by a U.S. patent apply only in the territory of the United States and have no effect in a foreign country. So an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. But every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.This is where patent treaties come in.

This has always been a cumbersome and expensive issue for applicants - partly because of the different laws and partly because many foreign countries are just darn expensive to file in - especially for a long application that has to be translated into foreign languages.

One significant issue for U.S. applicants is that In most foreign countries, publication of the invention before the date of the application will bar the right to a patent. There is no grace period as in the U.S.

Maintenance fees can also be a much more expensive issue. In some countries and in the European Patent Office maintenance fees are annual and must be paid even before the application is examined.

Most foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.

So let's talk about these patent treaties.

The Paris Convention

The oldest treaty is the Paris Convention. The total number of signees is 168 countries, including the United States. The formal name is the Paris Convention for the Protection of Industrial Property. It provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens. The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right means that, on the basis of a regular first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over applications for the same invention that may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the first application, will not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention, the sale of copies of the design, or use of the trademark. The period of time mentioned above, within which the subsequent applications may be filed in the other countries, is 12 months in the case of first applications for patent and six months in the case of industrial designs and trademarks.

The Patent Cooperation Treaty

Another patent treaty, known as the Patent Cooperation Treaty, was negotiated at a diplomatic conference in Washington, D.C., in June of 1970. The treaty came into force on January 24, 1978, and is presently (as of December 14, 2004) adhered to by over 124 countries, including the United States. The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format.

The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed.

Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.

So What Do You Need to Do With Patent Treaties?

Actually - you should not have to worry about any of these formalities. If you are working with a competent patent agent or attorney - they will handle all of this for you and explain all of it to you. Some of the key things you do need to understand however are:

    1) Filing and prosecuting foreign patents is expensive - far more so than filing domestic only.

    2) The use of these patent treaties, especially the PCT, allows you to delay the decision to spend those extra dollars until you are sure you have a good invention and a market for it.

    3) And remember , there is no grace period for most foreign filings. If you think you are going to file foreign, do not disclose your invention in any way until you have at least filed a provisional patent in the U.S in order to establish a priority date.


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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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