Header graphic for print
WinTech Legal Insight for Start-Up and Established Technology Businesses

Patent Protection in the U.S. and Abroad

Posted in Patent Counseling & Strategies

With increasing globalization, it is important to consider patent protection outside of the United States.  In the United States, utility patents provide protection on inventions for a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement.

When pursuing patent protection outside of the U.S., one option is filing directly the patent office of the country of interest, such as the Canadian Intellectual Property Office (CIPO), European Patent Office (EPO), or Japanese Patent Office (JPO).  Filing directly in a country of interest will require payment of filing fees, and depending on the country, translation of the patent application may be required, which can significantly add to the cost of filing.  If only a few countries are of interest, filing directly in countries of interest could be the less costly option.

When seeking patent protection, it should also be noted that some countries may require foreign filing licenses (FFLs) before patent applications are filed in foreign countries.  For example, for inventions made in the U.S., except when authorized by a license obtained from the Commissioner of Patents, a person cannot filed in any foreign country prior to six months after filing in the United States.  The requirements for obtaining FFLs vary from country-to-country, and penalties for failing to obtain a FFL may vary from civil to criminal penalties.

Another option for pursuing patent protection abroad is an international application or PCT application. The Patent Cooperation Treaty (PCT) is an international patent law treaty, which provides a unified procedure for filing patent applications to protect inventions in each of its contracting states.  There are currently 148 contracting states, including the United States, Canada, Germany, France, and Japan.

A PCT application allows for a single patent filing in one language that establishes a filing date in the PCT contracting states.  However, PCT applications are sometimes referred to as placeholders because they do not result in granted patents.  In order to continue pursuing protection, applicants must also enter the national and regional phase in the contracting states of interest at prescribed deadlines.  For example, to pursue protection in Japan, one must enter the national and regional phase in Japan thirty months after the filing date of the PCT application or the earliest priority date of the application if priority is claimed.  In situations where several countries are of interest, PCT applications may provide the benefit of deferring the selection of countries of interest, as well as national phase filing and translation costs, for several months until the national phase entry deadline.  While PCT filing cost may add to the total cost of foreign protection, this deferral of national phase filing and translation costs may outweigh the additional cost.

For further information and guidance on obtaining patent protection, please contact a patent professional for assistance.

Information provided on this website is for information purposes only. It is not, and should not be taken as legal advice.