How Do International Patents Work? Patent protection outside the U.S.

HOW DO INTERNATIONAL PATENTS WORK?

I just had a client call and asked me this question this morning, “How do international patents work?” There are four things you need to understand as a business owner, entrepreneur, inventor when you're starting to think about whether you should protect this outside the United States internationally, in other countries, with a patent.

THERE'S NO GLOBAL PATENT

The first principle is that there is no such thing as an international patent. There's no global patent. Patents are country by country. Every country has their own patent system and issues their own patents through their own system. There are no international patents, however, there is an international patent application process that you'll hear referred to as the PCT or the Patent Cooperation Treaty. There's also another treaty that allows patents to be filed from one country and then filed in another country.

International Business


The most important basics:  there are four things you need to understand. The first has to do with non-disclosure agreements, which allow you to protect yourself with respect to if you think you might want to ever get a patent in another country outside the United States. The laws in each country are different in their patent system. The United States is a little bit of an odd duck as it has a grace period of one year, but that is not the case in many other countries.

PATENT GRACE PERIOD

In the United States, if you publicly disclose or offer to sell your invention, you have one year to file your patent application with the US Patent Office. If you don't, then it's lost forever. If you do happen to get a patent through, it could later be invalidated because you waited more than year so you have a one-year grace card. In contrast to the one-year grace period, in the US and a couple other countries like Canada has a similar grace period. I think that most countries in the world notably Europe, China, and Japan. Those type of countries have a an absolute novelty in under the absolute novelty day that you expose or you know publicly disclose your inventive idea whatever public disclosure is that's a factual issue.

The general rule is that day that you disclose it if you don't have a patent application filing filed on that date you just blew your patent rights in those absolute novelty countries, which is most of the world. That's the general rule, but country by country there's going to be specifics that I as a U.S .patent attorney would have to check with local counsel in each country but what their specifics are in a country.

Non-disclosure agreements

The general rule also is that non-disclosure agreement will protect you from a disclosure when you make it say. Say you have a meeting with a manufacturer, a supplier, a vendor,  a licensee or you have a meeting and the meetings under NDA that NDA moat in a lot of countries. My understanding is that that that will protect you against this absolute novelty rule. It won't be considered a disclosure. This essentially creates your own grace period long as no one else you know goes and beats you to the to the Patent Office in whatever country and create your own grades grace period with NDA's.

International patent expenses

The second point is once you leave the United States, if you thought the United States patent system was expensive, way do you get a load of what it cost to file internationally. The United States generally is a bargain for the value you get the quality of the protection and the cost to get a patent. For example, today I was just talking to a client we got our we got a patent allowed in ten months on an advance system without accelerating or anything. You know the patent system can be quite affordable and effective when you follow the right procedures and the best practices.

On the international patent side, once you leave the United States you need to be prepared for things that are called annuities. A lot of these countries they charge you every single year hundreds to thousands of dollars just to keep the application alive and even before it becomes a patent. In the United States, once you get your patent issued you pay a maintenance fee at four years and twelve years. From when it's your patent issued. In most countries you're paying an annuity every single year and then on top of that if there's prosecution costs and other expenses and it can really start to add up translation costs etc. country by country. If you if your eyes are too big for your stomach be careful I've seen that happen. I often talk clients out of going international because it is finances are an issue that it's not some international something you really understand why and what your what your business plan is why you need protection in a particular market.

Ability to defer the cost

The third point I want to make today is the ability to defer the cost you don't even have to decide right away when we're just filing a provisional or filing a non-provisional in the United States it's the first patent application on your idea you've got 12 months under these treaties the PCT and the Paris Convention before you have to make a decision and may actually make a filing in either to the PCT or direct in another country most of the countries that anybody cares about are signatories to these treaties so for the most part with a couple of minor exceptions you have 12 months to get your patent application filed.

You don't have to decide right away when you're worried about protect getting your provisional or your non provisional first application filed in the US you got that 12 months before you have to even think about it so don't sweat it right away it's not like you have to make this big decision right away where they have to go international or not just defer that decision.

International path is through the PCT

The last point that I want to tell you about is this the main route that most large companies and small entrepreneurs take when they want to go international path is through the PCT or the patent cooperation treaty.  This is by far the most cost-effective and advantageous process that we're using more and more frequently to get a an idea so that it has the ability to be protected outside the United States. By deferring all these larger costs there is an upfront cost of several thousand dollars to get the application started but you get a couple of it benefits one is that you get a search report and sometimes that search report it can be done by European examiner or a Chinese examiner and you get some insight into what kind of a buzz saw or not you're going to be running into if you proceed with a patent application. 

In these foreign countries you can get an early indication sometimes. We even have the US examiner look at it so we get an early indication of what the US examiner is going to do.  There's a number of different strategies and how we pick who's going to examine it.  The costs are but the big benefit is you get to defer the onslaught of the larger annuities. Those bigger decisions of which countries are going to go into and financially commit to you can defer that for 30 months from when you initially file your initial provisional or a non-provisional in United States. You get two and a half years, or thirty months of time to think about it time to see if it's worth it.  So you're buying an option if you will to defer the cost to defer your decision about international for two and a half years.

When you go this PCT route plus you get some a good search results. Typically, that gives you some good insight as to is this worth investing in or not you know if it comes back and totally ripped up the search is non-binding and it doesn't lead to a patent, but it is a search by a patent office and patent examiner in one of the designated countries to the PCT.  It gives you a lot of intelligence that you can then leverage in in your in your decision-making so make it more fully informed decision.

Those are the four points. The NDA to avoid the absolute novelty rule it's expensive you got to make sure your eyes aren't too big for your stomach you do get this cost to furrow well you can defer the cost for twelve months. You don't have to make this big decision should I start the International patent process or not because you have 12 months from your US filing date. The PCT is a very good mechanism for promoting your international or starting off your international patent strategy.  

Hopefully, this has answered your questions to give you as the entrepreneur inventor business person some insights as to what you need to know.

Have a profitable day!


Craige Thompson, JD, EE, PE, Patent Attorney

Craige Thompson JD, EE, PE Patent Attorney Author of Amazon #1 Best seller, Patent Offense

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Andy Gates President/ Gates Manufacturing Gates Manufacturing

Craige is one of the best patent attorneys I've worked with

Craige is one of the best patent attorneys I've worked with. There was a minimum of fuss, very straightforward, and got our patent issued in a little over a year. Will definitely use Craige again for our next IP work.