International Patent Law: Filing Overseas

A patent granted by the U.S. Patent and Trademark Office (USPTO) will protect an inventor's exclusive rights to the invention within the United States and all U.S. territories. But outside of the U.S., your invention remains fair game. Nearly every country has its own patent law, so inventors who wish to protect their inventions internationally are advised to apply for patents in countries where unauthorized use is most likely to occur.

In most countries, publication of an invention before a patent application is filed will prohibit the right to that patent. Many countries also require maintenance fees for patents. Most foreign countries also require that the invention be manufactured in that country after it is patented, usually for about three years.

While there is no unified international patent law, per se, more than 124 countries including the U.S. signed onto the Patent Cooperation Treaty. This treaty, first enacted in 1978, provides for centralized patent filing and a standardized application format to make it much more efficient to file international patents. An inventor who files an international patent application under the auspices of the treaty is given an international filing date with each participating country, which provides the following:

1. A search of the invention
2. A later period of time within which national patent applications must be filed

Inventors who file for patent protection under the treaty within one year of filing in the U.S. have up to 30 months from the U.S. filing date to file in any of the participating countries. If you plan on filing a patent application in multiple countries, you may want to consult with a patent attorney specializing in international patent law.

U.S. patent law requires licensees whose inventions are made in the U.S. to obtain a license from the director of the USPTO before applying for a patent overseas. This license is required if the overseas patent application is to filed before a U.S. filing or within six months of filing for a U.S. patent application. After six months from the date of the U.S. patent application filing, the license is not required unless the invention is ordered to be kept secret.

More Information About International Patent Treaties

Patent Cooperation Treaty

• About the Patent Cooperation Treaty
• Patent Cooperation Treaty Resources (World Intellectual Property Organization)

The Paris Convention

• Paris Convention for the Protection of Industrial Property
• Test of Paris Convention for the Protection of Industrial Property (World Intellectual Property Organization)