Because most business these days is done on the global scale, domestic patent coverage in the U.S. often tends to be insufficient. If you’re doing business in the global industries and markets, you will need to include foreign patent protection in your intellectual property strategy. Having prepared, filed, and prosecuted patent applications (domestic and foreign), our firm is highly respected for its knowledge and patent prosecution.
Patent law is part of intellectual property law and is protected under U.S. federal law. Patent law is the area of law that deals with an inventor’s exclusive right to use their own invention. Patent law protections aim to encourage the creation of new products and inventions through granting creators the legal right to use and profit from the inventions they create.
United States patent law is a part of U.S. federal law that comes directly from the United States Constitution as well as from federal laws passed early in United States history.
When someone holds a patent, that patent holder may challenge any person or corporation who tries to infringe on their patent rights. When a patent holder accuses another person or corporation of patent infringement, the dispute must be litigated. Patent attorneys help their clients apply for patents, enforce patents, and challenge any patent infringement if it happens.
Obtaining International Patent
There are many avenues for obtaining an international patent.
It should be noted that there are two ways to file: either with a particular foreign country OR as part of an international application filed with WIPO.
International patents may be filed directly with the foreign country as a foreign application. They can also be filed for with the World Intellectual Property Organization (WIPO) as an international application, called a PCT application. “PCT” stands for the Paris Convention Treaty.
The PCT assists patent applicants in seeking international patent protection, helps patent offices with their patent granting decisions, and also facilitates public access to information relating to patented inventions.
Applicants are able to file one international patent application under the PCT and obtain protection for their invention in a large number of countries. Countries that are part of the PCT are participants in the international patent process with WIPO.
File Domestically or Internationally First?
As part of the PCT application, the person applying for the patent is able to hold off on making a determination of which foreign country to file in for 30-31 months. As part of the application, you are able to preliminarily hold your right to file in over 140 different foreign countries. The U.S. is part of the PCT so coverage domestically can be obtained after filing the PCT application.
Another way to obtain an international patent is to first file domestically and then file the PCT application. The filing of a priority application first will affect the timeline, but a total of 30-31 months is still granted by the PCT to make the determination which foreign country to file in.
Why File an International Patent?
An international patent application grants an applicant the flexibility and time to make the determination of which foreign country they want to enter into. It’s important to note that a single international patent is not granted. Each foreign application must and will be examined according to the country’s national laws before issuing.
There are many benefits of PCT international applications, including: cost savings, time benefits, as well as a simplified foreign filing process. The fact that you are able to obtain a domestic patent as part of the process also saves times and effort.
Steps of Application
Our team is well versed in filing for international patents. While each patent will require a specific process, based on what the invention is, here are the basic steps of obtaining an international patent:
Filing – you file an international application with a national or regional patent Office or WIPO. That application must comply with the PCT formality requirements, in one language. You will pay one set of fees.
International Search – an “International Searching Authority” (ISA) identifies currently published patent documents and any technical literature which may have an influence on whether your invention is patentable. The ISA will establish a written opinion on your invention’s potential patentability.
International Publication – as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application will be disclosed and made public to the world.
Supplementary International Search. This is optional. At your request, second ISA will identify published documents which may not have been found during the first ISA search because of the diversity of prior art in different languages and different technical fields.
International Preliminary Examination. This is optional. At your request, one of the ISAs will carry out an additional patentability analysis. This is usually on an amended version of your application.
National Phase: at the conclusion of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you are able to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
We represent clients and their interests in nearly every country in the world, and help them achieve their international market and IP strategy goals.
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides patent services to protect the inventions that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent enforcement and how to avoid possible infringement issues.
Our patent attorneys actively and aggressively represent plaintiffs and defendants in a wide variety of proceedings before courts both domestically and internationally. We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.