Can I Get International Patent Protection?

How can you secure international patent protection?

By , Attorney · Benjamin N. Cardozo School of Law

Perhaps there was a time when products were conceived, manufactured, and purchased entirely locally. In such a world, inventors would need to worry about protecting their intellectual property only within their own communities or countries. But the rise of globalization, particularly spurred by online commerce, has dramatically changed that dynamic. Perhaps a product is conceived in the United States, but it might be manufactured in various pieces across several different countries, and then imported to countries all over the world for sale.

This new global economy presents a host of challenges for inventors. How can you ensure that your intellectual property is not being infringed in the many countries that now have easy access to your product? What can you do if your business is based in New York, but your product is infringed by manufacturers in Thailand and then sold in counterfeit form across Europe? These challenges are real, and present new problems for inventors. What can you do to protect your invention internationally?

Understanding U.S. Patent Protection

Before jumping into global patent protection, we must first understand exactly what patent protection covers. Domestically in the United States, patents are essentially an exclusive right granted for an invention.

How can you obtain a patent on your invention? The U.S. Patent & Trademark Office (USPTO) is the federal agency charged with evaluating patent applications and issuing patents. To obtain a patent, you must file an application with the USPTO. It issues three different kinds of patents: utility patents, design patents, and plant patents. Utility patents are the most common.

Not all inventions qualify for a patent. To qualify, an invention must be:

  • useful, no matter how trivial that use might be
  • novel, meaning different from previous inventions, and
  • non-obvious, meaning it represents some sort of new development.

Once filed in the U.S., a patent application will be reviewed by the examiners at the USPTO. The examiners may challenge aspects of the application, or ask for clarifications or revisions. Once approved, patents are ordinarily valid for 20 years from the application filing date. Some patents can take several years to obtain, depending on the level of scrutiny from the USPTO.

If your patent is infringed, meaning that a third party uses your sells your patented invention without your permission, you can sue in a U.S. federal district court for infringement. The court can order that the infringer stop the conduct, as well as award money damages by way of compensation.

International Patent Protection

The owner of a U.S. patent can stop anyone from making, using, selling, or offering for sale the invention in the United States. In addition, a U.S. patent owner can stop anyone from importing unauthorized copies of the invention into the United States.

However, U.S. patent rights stop at the American border. An inventor cannot use a U.S. patent to stop someone from making, selling, or using the invention in another country. To do that, American inventors must acquire patent rights in that country and rely on rules of reciprocity in international treaties.

"Reciprocity" or "reciprocal treatment" means that when an inventor from Country A applies for a patent in Country B, the inventor will be treated in the same manner as inventors living in Country B. This reciprocal treatment extends only to inventors who live in nations that have signed the treaty ("signatory nations").

The U.S. is a signatory nation to several international patent treaties, the most important of which are the Paris Convention and the Patent Cooperation Treaty.

Contrary to what many inventors might assume, there is no such thing as an "international patent"; that is, a single patent that protects your invention in all of the world's 195 countries. Each country has its own system of patent enforcement and registration, which makes enforcement complication for inventors.

However, there are certain mechanisms and treaties that can help you secure as much protection as possible.

Regional and Country-Specific Patent Offices

First, to the extent that you are interested in protecting your invention in one specific country where you intend to do business, you can simply file for protection there directly.

The World Intellectual Property Organization (WIPO), an important nonprofit that attempts to organize intellectual property information globally, provides a helpful national directory of patent offices equivalent to the USPTO. Those country-specific patent offices can usually guide you through the application process to obtain their domestic protection. Be aware, of course, that the extent of patent rights will be slightly different in each country.

Second, although there is no global patent office, there are many regional patent offices that do provide regional patent applications. Some examples include the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Organization (EAPO) and the European Patent Office (EPO).

These organizations allow inventors to file a single application that will receive protection in multiple "member countries" concurrently. As you can imagine, this makes sense in regions where goods are traded frequently between neighboring countries.

Paris Convention

The U.S., like the majority of industrialized nations, is a party to the Paris Convention, an international treaty that provides certain reciprocal patent filing rights. Members of the Paris Convention are known as "Convention countries."

In order to acquire patent rights, the inventor must separately file a patent application in each Convention country. The advantage of the Paris Convention for a U.S. inventor is that the inventor's filing date can be retained in another Convention country provided that the patent application is filed in the country within one year of the U.S. filing date (or six months for design patents).

For example, an inventor files her U.S. patent application on May 1, 2019. If the inventor files a patent application in Canada before May 1, 2020, she will have priority over any other patents that may be filed after May 1, 2020.

Patent Cooperation Treaty

Most industrialized countries are also members of the Patent Cooperation Treaty (PCT), a treaty that enables inventors to file a relatively economical international application in their home country within one year of their home country filing date.

There are two advantages in filing a PCT application:

  1. the inventor obtains a filing date that is good in every member country in which the inventor seeks patent protection, and
  2. an initial international patent search will be conducted and PCT member countries will rely heavily on this search.

The inventor in a PCT nation must eventually file separate "national" applications in each country or regional group of countries where the inventor wants coverage, but the initial search procedure simplifies the international patent process.

A U.S. inventor cannot file a foreign patent application until the inventor gets a PCT foreign-filing license or until six months have elapsed from the inventor's U.S. filing date. The inventor can then obtain a 20- or 30-month delay, depending on whether the inventor requests examination (a provision known as "Chapter II") before filing in countries that belong to the PCT.

High Cost of Foreign Patent Filings and Enforcement

Even with all of these options, you should consider the financial realities of aggressive international intellectual property protection. Beyond simply the cost of acquiring multiple patents, you would need to hire local counsel to monitor each country for potentially infringing uses of your invention, and then sue for injunctions and damages in local courts.

Such a strategy rarely makes sense for average solo inventors, or even most small and midsize businesses. You run the risk of spending more on legal fees than you would receive on sales or royalties!

Note that just because your product is being infringed in another country does not necessarily mean you need to obtain and enforce a patent there. Quite simply, it might not be worth your time if your primary revenue is solid and derives from countries in which you do enjoy full protection.

In most cases, businesses are smarter to focus on protecting their invention only within their primary market, and focusing spending on marketing, research, and development rather than legal fees. The calculus is different, of course, for large multinational corporations that truly do substantial business around the world, and have significant legal budgets.

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