Patents Outside the United States

Posted Thursday, July 28, 2011.

A United States Patent gives the holder a series of exclusive rights to practice the invention disclosed in the patent. Essentially, anyone other than the holder who uses, sells, distributes, or otherwise practices the invention in the United States without the consent of the patent holder infringes the patent. However, a U.S. patent only governs patent rights for activities taking place inside the U.S. The U.S. patent holds very little power over activities in the rest of the world.

Inventors can and should pursue patent rights overseas. A common misconception is that there is an “international patent.” In actuality, patents are granted on a country-by-country basis, and the patent offices of foreign countries grant patents to its own citizens and foreign nationals alike. Consequently, overseas patent offices issue patents to U.S. citizens, just as the United States Patent and Trademark Office (USPTO) issues U.S. patents to inventors who are not U.S. nationals.

A U.S. inventor who wants to be the exclusive seller in Japan, for example, can seek a Japanese patent issued by the Japan Patent Office (JPO). The U.S. inventor would then have exclusive rights to practice the invention in Japan, and could enjoin a Japanese national from practicing the invention during the term of the Japanese patent. Conversely, should a Japanese citizen apply for and receive a U.S. patent, that patent precludes anyone else from practicing the invention in the U.S. without the authority of the Japanese holder of the U.S. patent.

In fact, there are currently 173 countries which are signatories to the Paris Convention for the Protection of Industrial Property, in which each member country extends the same treatment of patent applications to foreign nationals as it would to its own citizens. Theoretically, one could receive 173 patents for an invention, but is that expensive to do? In a word: yes. The cost to obtain a patent in a foreign country is comparable to what it costs in the United States. In fact, in many countries the cost can be substantially more than in the U.S. for a variety of reasons.

For example, patents generally must issue in the official language of the country of issuance. If the target country’s official language is not English, the foreign patent office will typically require a translation of the application documents prior to granting the patent, which adds expense. In addition, after paying filing fees, some countries (Canada, for example) have a maintenance fee for each year that an application is pending. The application maintenance fee practice has not yet caught on in the United States Patent and Trademark Office. Finally, while in the U.S. individual inventors and smaller entities enjoy a 50% break on many of their fees, the USPTO is unique among its worldwide peers in that regard. Actually, prosecuting a patent in the United States can be a bargain relative to the rest of the world.

It is therefore easy to imagine that obtaining foreign patents that provide worldwide coverage gets expensive quickly. Therefore, most inventors pick and choose from a list of countries where the inventor might plausibly operate their business, and limit patent prosecution for the invention to those countries.

The cost of obtaining a foreign patent notwithstanding, inventors must give serious and careful consideration to protecting patent rights overseas. World markets are burgeoning as the populations of countries like Brazil, Russia, India and China grow, along with corresponding demand for U.S. goods. Existing U.S. trading partners such as Canada and the member-states of the European Union are natural avenues for growth. Australia, New Zealand, South Africa and other English-speaking countries offer the possibility of obtaining patents without requiring expensive translation. Asia offers inexpensive manufacturing possibilities as well as maturing patent systems that provide protection against copying of your invention if you decide on offshore manufacturing.

Your U.S. patent is generally valid for 17 years. Your invention is going to be a smashing success here. Who can say you won’t be getting inquiries from customers in other countries during the next 17 years? Due diligence related to your invention includes looking at patenting your invention overseas.

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