While preparing to file for patent protection, it may be difficult to determine which countries, if any, may be important for an invention’s patent portfolio. While applying for a U.S. patent may be standard, what about Canada, China, or the European Union? There are many considerations to keep in mind when making this decision, and it’s wise to have a basic understanding of foreign patent protection.
Why file for foreign patent protection?
An invention is only protected in the countries in which an inventor files for patent protection. If a patent is applied for in the U.S. so a product can be sold in the U.S., foreign patent protection may not be necessary. However, if a product is to be sold internationally, or even in just a single country outside of the US, this may be the better route.
It is not uncommon for a seller of goods to find knock-offs, or even their own products, being sold in a foreign jurisdiction. The product may be offered at a lower cost, undercutting sales. In another example, the sale of counterfeit products made from cheap materials may hurt a brand after unsuspecting purchasers buy a product bearing the brand, which quickly falls apart. A lack of patent protection in that country can make it difficult, if not impossible, to shut down these unauthorized sellers or counterfeiters. These issues may become a drain on time and other resources, not to mention revenue.
Discussing the situation with your patent counsel is always your best option. Aside from the innovation itself, a patent attorney is arguably the single greatest resource in building your patent portfolio.
How to obtain and maintain foreign patent protection
An important factor in filing for foreign patent protection is priority, which was discussed in a previous installment. To file a foreign patent application claiming priority on a US. patent application, the application must be filed within 1 year. This is true of both provisional and non-provisional applications, meaning the filing of a provisional application starts the clock and foreign filing patent applications must be filed by the same deadline as a non-provisional patent application. Design patent applications have a shorter priority period of 6 months.
Foreign patent protection may be filed at any time, but understand that priority cannot be claimed to an earlier application once outside the statutory period. The big concern here is that the benefit of the earlier filing date is lost. While this may not be the ideal approach, there are circumstances in which filing foreign patent protection without a claim a priority may actually be favorable.
Your patent counsel can fully advise you as to what course of action is best. Your patent counsel will work with patent counsel in the country or countries in which protection is being sought, as most often foreign applications must be filed by firm within that jurisdiction, with some exceptions. While the individual patent laws vary, the process is more or less the same as in the U.S.. After a period of formal examination, a patent may or may not issue, depending on the circumstances of the application itself. This process may be shorter or longer than that of the U.S., depending on the individual country.
Another thing to bear in mind is patent maintenance. Much like the U.S., most foreign jurisdictions have certain fees which are required at various intervals once a patent has issued. The costs and deadlines vary from country to country, and a patent counsel can advise on the costs in advance of the deadlines. What is called “maintenance fees” in the U.S., other countries often refer to as “renewals.” The outcome is the same, however, payment must be completed in the deadline or your patent will lapse.
In sum, foreign patent protection is not for everyone, and individual needs will likely change on a case-by-case basis. The Edison Nation in-house counsel will help determined which countries it is prudent to file foreign patent protection for. Specific facts surrounding each invention are considered to make this determination. This is a very complex and nuanced area of patent law, and this low-level overview barely grazes the surface. The good news? Inventors will never need to pay a dime or spend any time on filing patents for ideas selected for commercialization by Edison Nation.
PLEASE NOTE: This post is for informational purposes only. This post is not intended to provide legal services of any kind to individual inventors. If you seek or require legal services of any kind, please contact an attorney as soon as possible.