An inventor is only awarded patent protection in the country in which they apply. If you seek patent protection in the United States only, you will only receive patent protection in the United States. A person in Indonesia would be able to produce your product without any concern of infringement.
So how do you protect yourself internationally? There is an expensive answer.
So let’s assume that you invented the next wonderful “widget”. The first thing the inventor should do is seek an experienced patent attorney to fully explain how to protect their invention at the initial stage of the process (i.e. , NDA’s, engagement letters, etc.).
Next, the inventor should consider which markets (i.e., countries) their invention would profit in. This may require a market study, which can be expensive.
The inventor should then instruct the attorney to prepare and draft a patent application in a format that complies with most country’s standards. For example, some countries require a summary section. Other countries have different claim limitations.
Once the application is completed, the attorney should file the patent application with the World Intellectual Property Association (WIPO) and choose which country should be the receiving office.
(Let me provide some context here). There are critical statutory deadlines when prosecuting patent applications. Each country has their own rules and regulations (some are similar to ours). However, under the Patent Cooperation Treaty (PCT) several countries have agreed to one set of rules. If an inventor files their patent application under the PCT, they have 36 months from the priority date (e.g., filing date) to subsequently file in a different country. This gives the inventor much more time than the one-year statutory deadline had they not file under the PCT.
In addition to creating additional time, the PCT will also examine the patent application just like any other authority. This will give the inventor the opportunity to make adjustments to the application before it is subsequently filed in another country. So to break this down, here is how the process goes:
- File your initial application in WIPO under the PCT.
- Have WIPO examine your application. Note, WIPO cannot give you a patent, but can provide you an analysis as to its viability.
- Three and half years later, file your patent application in subsequent countries. Commonly called “entering the national stage.”
- That respective country examines your patent and determine whether it should be issued as a patent.
- The patent issues and you begin paying maintenance fees. Note, some countries require that you pay the maintenance fees while the application is being prosecuted.
Please note that US attorneys cannot prosecute applications in other countries but must work with local counsel to handle the patent application. Further, some countries require a translated patent application. Other countries require document that are notarized before the country’s consulate. You may also need a foreign filing licences.
Handling international applications are tricky and complicated. Please seek an experience attorney before making that step.
P.S. There are a few countries that did not agree to participate in the PCT – which means that the deadline to file in those countries is 12-months from the initial filing date. Those countries are:
- Cape Verde
- East Timor
- Gulf Cooperation Council (GCC) (GCC itself is not a member, but all its countries are, including Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and UAE)
- Hong Kong (may enter through China filing)
- Solomon Islands
- South Sudan
- Vatican City (Holy See)
- Western Samoa