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International Patent Protection

Foreign Patent Protection
A patent application filed with the USPTO protects the invention only in the U.S. If you are considering filing the patent application in foreign countries, but are unsure where, you have three foreign filing options to consider.

In the event a patent applicant files a patent application in a foreign country within one year of a U.S. filing date, the applicant retains the U.S. filing date as the priority date for the foreign patent application. Thus, if you file in a foreign country within one (1) year of filing in the U.S., you are considered to have filed in the foreign country on the same day that you filed in the U.S. Preserving this priority date is essential to assure the foreign patent application antedates prior art. Under this scenario, you are provided with three (3) foreign filing options.

Filing a foreign patent application directly in a specific country;
Filing a patent application with a regional patent examining authority, i.e., the European Patent Office (click here for current member states of the European Patent Office www.epo.org/about-us/epo/member-states.html ); and
Filing an international patent application with an international patent authority through the Patent Cooperation Treaty (PCT).

Using the PCT Filing Method
Filing through the PCT system, rather than directly into member countries, allows you to delay “National Phase” filing in these countries up to 30 months from your U.S. application filing date (31 months in some countries). The delay afforded by an international patent application can be very helpful by providing more time to allow you to develop a better idea of your markets and competitors. Filing through the PCT will give you up to 18 or 19 months additional time than you would normally have to file directly in foreign countries.

The international patent application is searched and examined on its merits in the office you select for that purpose. The office you select depends on your citizenship or your residence. For example, if you are a U.S. citizen or resident, you may use the USPTO, the Korean Intellectual Property Office, or the European Patent Office. The selected office will issue an International Search Report and an International Preliminary Report on Patentability.

Filing a Chapter II Demand for an International Preliminary Examination used to be necessary to secure the full delay period. The Demand filing is now optional in all but a few countries. The following countries not currently subject to the 30-month rule:

Tanzania, Luxembourg, Switzerland, and Uganda.
At the end of the international process (typically 30 months from the priority date), the patent applicant must pursue direct national and/or regional filings. However, if direct national filings are selected, you do not need to file in every PCT member country.
The primary advantage of the PCT filing system is the delay of national filing costs. The PCT system is also a very appealing option for those seeking licensees for their foreign patent rights. A PCT application can keep your options open in numerous countries for a relatively low cost. If mutually agreed upon and accepted in a License Agreement, the licensee would pay the costs of prosecution in any countries in which the licensee is interested.

Contact The Law Firm of P. Jeffrey Martin, LLC in N. Myrtle Beach, SC to schedule a free initial consultation to discuss foreign patent protection.

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