Is a US Patent Valid in Other Countries?
This is an important question many entrepreneurs and inventors take into consideration when they want to ensure the protection of their ideas.3 min read
2. Foreign Patents
3. What Is PCT?
Is a US patent valid in other countries? This is an important question many entrepreneurs and inventors take into consideration when they want to ensure the protection of their ideas. A patent is awarded by the government of a country and is enforceable within its territories.
How to Obtain a Patent
You can obtain a patent that is valid in a specific country by putting in a request to the country's patent office. Each country will have various administrative arrangements and requirements, and some will even have regional patent offices such as the European Patent Office.
In countries where an issued patent was not granted or, if granted, had expired or lapsed, then the invention becomes free to use or available for others to patent. Though each country may have its granting process and constraints. It does not matter as to whether or not the patent applies to your particular country as long as the patent is considered to be a valuable source of information.
For all countries that are part of the World Trade Organization, permission from the patent holder is required by anyone who wishes to not only use the technology that is patented but also to import any products that fall under the patented technology. For example, under 35 USC 271 laws, the importation of products in the USA is prohibited from certain companies that do not protect patents, so they are not running the risk of infringing on a valid US patent.
There is no patent that covers every country in the world. If you wish to obtain patent protection in another country, you will be required to file for a patent there. There are many factors to take into consideration as to where to file for foreign patents. These factors can relate to:
- The potential market.
- The manufacturing centers used for the invention.
- Factors related to both the ability to protect and enforce under the country's intellectual property laws.
You may also want to consider the fact that foreign patent protection can be a costly endeavor, especially if the application is large, detailed, or complex. You will also need to pay for the application to be translated into the local language.
There are some filing strategies you can follow to make the process easier such as:
- Filing directly with the foreign country.
- Filing through a foreign regional office, such as the European Patent Office.
- Filing an international application under the Patent Cooperation Treaty.
What Is PCT?
PCT stands for the Patent Cooperation Treaty, which is an international treaty that has over 150 members. Under the PCT, countries that are members will grant inventory that file patents in their home country the option of using that filing date on their PCT application if it is filed within one year of the initial filing. This will allow investors to enforce claims dating to the original application if the patent is approved.
A PCT application must be filed within 12 months of the original patent application. This also allows inventors to sell and use the invention for 12 months prior to filing the application to see if they wish to seek out a foreign patent. It is important to remember that if you are protecting your patent form the date of the first sale, that will be the date that starts the 12 month period.
While PCT applications are considered to be international patents, there are no true international patents, and this will serve as a stepping point to achieving protection in the countries that are members of this treaty. This means that even if you receive a regional patent application, you must still obtain registration in each country in which you wish to enforce your patent rights. Though having a PCT application can afford you more time to be able to file for and secure these rights.
Once a PCT application is filed, it will delay the national stage filing costs for 18 months from the date of the PCT application. This time is often utilized by inventors to refine their inventions, explore and determine potential markets, and try to find buyers or licensees.
You can decide if a PCT application is a necessary stepping point based on the number of countries in which you believe you may file for protection.
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