A U.S. Patent may be enforced against parties that make, use, offer to sell, or sell a patented invention in the United States, or imports such a patented invention into the United States. Individuals seeking patent rights enforceable for actions outside of the United States may do so by obtaining patents from government offices in countries or jurisdictions where patent rights are desired.
Treaties allow individuals filing a patent application in the United States Patent and Trademark Office (USPTO) to pursue a corresponding patent application in other countries by acting within one year of the date of filing of the patent application in the United States. For example, within one year of the date of filing a patent application in the United States, an applicant may file a corresponding International Patent Application through the Patent Cooperation Treaty (PCT) (“PCT application”) using a process established by the World Intellectual Property Organization (WIPO). A PCT application may claim priority to one or more patent applications filed in the United States less than one year prior to the date of filing the PCT application. Within 30 months of the earliest claim of priority, the applicant may file separate “National Stage” applications in individual countries based on the PCT application. These National Stage applications may have the benefit of the earliest claim of priority (e.g., filing date of the corresponding patent application filed in the United States). An applicant of a U.S. Patent application may also file applications directly to foreign patent application without using a PCT application through the Paris Convention.
While our firm is not licensed to represent clients in jurisdictions outside of the United States, we can assist our clients in obtaining foreign patent rights. Our firm may, for example, file PCT applications in the USPTO acting as a “Receiving Office” to process PCT applications. We can also facilitate representation of our clients by any one of our several foreign counsel contacts licensed to file and prosecute patent applications in jurisdictions outside of the United States (e.g., National Stage applications based on a PCT application or patent applications filed directly through the Paris Convention). After a foreign counsel files a patent application claiming priority to a corresponding US patent application, we may assist with overseeing the foreign counsel to ensure that prosecution in the foreign jurisdiction is consistent with prosecution of the corresponding US patent application in the USPTO.
Parties interested in pursuing foreign patent rights should carefully consider the additional cost of obtaining such foreign patent rights beyond costs associated with obtaining a corresponding US patent. For example, cost for translations, government fees and services of foreign counsels associated with obtaining and maintaining a patent asset in multiple jurisdictions is typically several times the cost associated with obtaining and maintaining a patent asset in the Unites States.
To learn more about filing for patent protection outside the United States, or to speak with a patent attorney about your particular invention, please contact us at 503-439-6500 or firstname.lastname@example.org. We are happy to provide a free consultation to get you started with the process.