Should I Consider International Patent Protection?
By Mark Levy
Way back in the early manufacturing days, like the 1980s, the issue of international patent protection was pretty cut and dried for most inventors: Why bother? For sales, unless you were an international corporation you probably would focus on the U.S. powerhouse economy. And where to manufacture your widget was obvious - with no sales planned overseas, it usually made sense to base production in the U.S.
Not so anymore. About 25 years ago, manufacturing in the United States shifted to Mexico. Then, within the past several years, that manufacturing started going to China and the Pacific Rim. Today, in almost every case coming my way, people seeking inexpensive manufacturing for their inventions think first of places like China - not North America.
So whether you like it or not, and even if you have absolutely no plans to sell your invention abroad, the new global realities of business may by default give your invention an international connection needing international patent protection.
ABOUT INTERNATIONAL PATENTS
As most of us know from Patent Law 101, the rights and privileges granted under a United States patent extend only to this country's borders and carry absolutely no weight elsewhere. Your rock-solid U.S. patent will not prevent people in other countries from making, selling or using your invention outside the United States. Likewise, almost every other country operates the same way.
Unfortunately, the way patent law evolved, there is no such thing as an international patent. If there were, many of my lawyer colleagues in other countries would have no work, and I would not be able to write off trips to see them.
Fortunately, there are several international treaties that help inventors and businesses at least apply for international patent protection. You don't need to know a lot about these, but it is very helpful to know what they are.
The Paris Convention
Adhered to by some 140 countries including the U.S., the Paris Convention for the Protection of Industrial Property in effect guarantees that citizens of any one member country have the same patent and trademark rights in all other member countries. However, it is very important to note, to actually get a patent in another country you still need to ultimately file a patent application within each country you want protection.
Among other advantages, a chief benefit of the Paris Convention to inventors everywhere is uniformity. For example, under the Paris Convention, many countries allow you to claim priority from your U.S. application for their utility patents - provided you do so within one year of your original filing date in the U.S.
The Patent Cooperation Treaty
Despite the absence of an international patent, very fortunately for you there is an international patent application. Based on the Patent Cooperation Treaty that came into force in 1978, the PCT application covers some 100 active member countries. By filing one international patent application under the PCT, you can simultaneously start the process of seeking protection for an invention in all member countries. Since all member countries are now quite accustomed to the PCT, you get the benefits of a streamlined process and a single priority date.
A most important fact about PCT application is this: From the time of your initial PCT application filing date, you get two and a half years to convert that application into a utility patent application in the member countries.
Other essential facts:
To claim priority from the date of your earliest application (for example, a U.S. patent application), the PCT application should be filed within a year of that initial filing date.
U.S. patent law gives you a one-year grace period in which to file a patent application after public disclosure.
Most countries, however, have no such grace period whatsoever, so any prior public disclosure can invalidate a foreign patent.
At the very latest, a PCT application must be filed before your U.S. patent application is published.
Administered by the World Intellectual Property Organization (WIPO), in Switzerland, the PCT's prominence is expanding. In 2012, WIPO received more than 2.5M applications - twenty times that of 10 years previous.
Forms, filings and fees
Say that I've convinced you to at least see what's involved to file an international patent application. Compared with the U.S. process, the steps aren't all that different. Plus your PCT application can be filed in English, German or French. A great place to begin is WIPO's website - www.wipo.int/index.html.en - and I've included a list of more links about PCT applications at the end of this article. There is a tremendous amount of detail at those websites, so patiently explore them.
Once you've written a PCT patent application you file that in the PCT division of the receiving office of the country you wish. For example, you could file with the PCT division of our very own USPTO. Once filed, your application will get examined, and upon acceptance you thus automatically reserve the right to pursue patent rights in all member countries' patent offices. As for costs, the PCT application filing fee is usually less than $3,000 for a full utility patent - a lot more than the USPTO filing fee. But, remember, for that single fee you start the process in all countries represented in the Patent Cooperation Treaty at one time. Try doing that before the PCT existed!
Keep in mind, what can get expensive is when your PCT application converts to what we lawyers call the national phase. That is the phase in which you actually pursue a full patent in each nation you wish. Costs to expect include required language translation of the application, fees of patent lawyers in each country, and patent maintenance fees which can be more than those levied in the U.S.
INTERNATIONAL PATENT APPLICATION BENEFITS
The biggest advantage of an international, or PCT, application? It buys you two and a half years - 30 months of precious time to decide which if any specific foreign patent protections make sense. Also, by proceeding with the PCT and getting patent rights in other countries, you might well establish licensing agreements with international corporations. Some corporations may look more favorably on your invention if you can show patents pending through the PCT. Others won't even talk to you unless you have at least patent pending in other countries.
Most of all, it's like getting international 'idea insurance.' A few months ago I read of a young, female American entrepreneur who took her sure-bet invention to a Hong Kong toy manufacturer. Not wanting to spend time and funds applying for patent protection, she was aiming for immediate production and sales. While she gave the presentation of her life, the manufacturer just didn't seem interested. Imagine her shock six months later while attending a California trade show - there was her invention already manufactured and being marketed by the very company she presented it to!
As the old TV commercial used to warn about blatant robbery, "Don't let this happen to you." U.S. patent protection does chill the domestic bad guys, but there are many others around the world ready to rip off your idea and become instant competitors.
Should you seek international patent protection? It may seem an expensive proposition, but it's one more of those crucial business decisions you have to make. If you don't decide - well, that itself is a decision.
FOR MORE ON INTERNATIONAL PATENTS:
WIPO - www.wipo.int/about-wipo/en/gib.htm
USPTO - www.uspto.gov/web/offices/pac/dapps/pct/
WIPO - www.wipo.int/pct/en/forms/index.htm
USPTO - www.uspto.gov/web/offices/pac/dapps/pct/chapter1.htm
WIPO - http://pctgazette.wipo.int/ (this database provides access only to the first pages of all PCT applications published since January 1997; limited guest access is allowed).
For a free initial consultation, contact a patent attorney at Denver based Block45Legal today by calling us at (303) 353-4531 or submitting a form here.