Many inventors and other patent owners provide products or services around the world. However, the protection of a patent granted by the U.S. Patent and Trademark Office (USPTO) ends at the U.S. border. You cannot use a U.S. patent to prevent someone elsewhere in the world from using your invention. A single international patent does not exist, so an owner will need to seek protection in each country individually. Rules of reciprocity require a country that issues a patent to a foreign national to provide the foreign national with the same rights as a patent owner that is a citizen of that country. These rules apply if both the foreign national’s home country and the country granting the patent have signed an international treaty that provides for protection.
It may not be worth obtaining and enforcing a patent in a foreign country unless that country is a primary market.
Filing for multiple patents can become expensive quickly, as can enforcing your patent rights in foreign countries by bringing infringement actions. You would need to hire attorneys in those countries to help protect your rights, and you would incur court costs in foreign courts. Unless you are operating a very large business, this probably is not financially worthwhile because the costs of getting and enforcing the patent would be greater than the income received from the patent. As long as you are getting sufficient profits from the use of your invention in your primary market, it does not make sense to seek a patent in many different countries.
Applying for Patent Protection in a Single Country
If you have a specific foreign country that you are targeting as part of your primary market, you may want to file for protection in its patent office. You can find equivalents to the USPTO in other countries by consulting the directory compiled by the World Intellectual Property Organization. WIPO also provides advice on how to complete the application process. However, not every country provides the same patent rights as the USPTO.
Certain regional patent offices allow an inventor to get protection in multiple countries through a single application. They would need to make sure that the countries in which they are seeking protection are members of the regional patent office. There is a European Patent Office, an African Intellectual Property Organization, and a Eurasian Patent Organization, among other examples.
The WIPO and the OIPC
Inventors can use the World Intellectual Property Organization’s (WIPO) directory to find intellectual property offices in other countries. The USPTO’s Office of International Patent Cooperation (OIPC) may also provide helpful programs and services.
Protection Under the Paris Convention
Most industrialized nations have signed the Paris Convention, which provides reciprocal rights related to filing patent applications. An inventor still needs to file a separate application in each country that has signed the Convention, but each country will use the U.S. filing date for the application. To take advantage of this protection, a U.S. inventor must file their application in the foreign country within a year of filing in the U.S. Inventors of design patents must file within six months of the U.S. filing.
Protection Under the Patent Cooperation Treaty
The Patent Cooperation Treaty is another international treaty that has been signed by most industrialized nations. You can file a PCT application for a reasonable cost within one year of filing an application for a patent in the U.S. The filing date extends to every member country of the treaty, and the patent search procedure will be simplified. Eventually, you will need to file a separate application in each country or region where you are seeking protection, but a single international patent search greatly reduces the cost.
You can file a foreign patent application six months after filing the U.S. patent application, or sooner if you get a PCT license to file the foreign application. Then, you can get permission for a delay of 20 or 30 months before filing a separate application in each PCT country where you want protection.