Foreign Patent Protection

"How do I protect my invention from being produce in other countries?" is one of the most common questions I get from inventors considering filing a US patent application. The intent of this post is to provide a short and practical answer to this very complex question of international law.

The problem is that a patent only provides protection in the issuing country and accordingly, a United States Patent protects your invention only in the United States. To get patent protection in any foreign country, you have to file a patent application in that county.

However, your US patent attorney can at least secure a filing date that is recognized in most foreign countries. When a United States patent application is filed, the U.S. Patent Office issues a Foreign Filing License. The license specifies a "priority date" and foreign patents must be filed within one year of the priority date, or the priority date is lost. In order to file these foreign patent applications an inventor must hire counsel in the country in which he/she would like to file and work with that attorney through the foreign patent prosecution process.

However, the one year window can be extended to thirty (30) months, or even longer in some cases, if your US attorney files an application under the Patent Cooperation Treaty (PCT). This involves having your US patent application sent to the international patent repository in Switzerland for an international patent search. Once the international search is performed, your US patent application and the international search results can be forwarded from the international patent repository to any country that is a party to the Treaty. Once the transfer occurs your application can be prosecuted by local counsel within the designated country.