International Patents For Your Invention Or Product Idea
If you have an invention idea that you would like to protect with patents, you will need to consider what your overall patent strategy should be and whether filing for patents internationally makes sense. Here's a few things you should consider as you conduct your analysis:
Do I need to get patent protection for my invention idea in other countries? Is there a "worldwide patent" I can get?
If you want to protect your invention idea and market it outside the United States, you will need to consider whether or not it makes sense for you to obtain patents on your invention ideas in other countries. Unfortunately, there is no such thing as a worldwide patent. But through various treaties, it is possible to obtain patent protection for almost all of the major countries you would likely want to sell your invention. But obtaining international patent protection is an expensive and time consuming process. So you really want to be sure that getting international patents is something that is worth your time and money before committing to doing that.
So how do I figure out whether I should get patent protection for my invention ideas or products in other countries?
The first thing you need to ask yourself is a few key questions to see if getting international patents is something you need to do.
What is the probability that I am going to want to sell my product outside the U.S.?
If I am going to sell my product, where am I most likely to sell my invention. What countries am I going to target for my invention?
Can I afford to file for and get patents outside the United States? Can I afford all the filing fees and maintenance fees to keep my patents if I get them?
Am I going to work with a licensing partner or sell the product myself?
If you are not working with a licensing partner, the likelihood that you will have both the interest and resources to sell your products outside the U.S. are probably pretty slim. Yes, it would be great to have a huge international market for your product. But unless you are working witha licensing partner with terrific access to the international markets and sufficient resouces, with the limited resources of most independent inventors, you may simply not have the money, support, infrastructure or time to invest in selling your product outside the U.S.
If you still think that you should get patent protection for your invention or product idea world wide and you are able to take on the costs of getting and maintaining international patents, then you will need to figure out the appropriate patent strategy. To do this properly, the help of a seasoned and experienced patent lawyer with years of experience working with international patents will be invaluable. So the first step in getting international patents should probably be in finding a good patent attorney with international patent experience. If you don't have a great patent attorney, you may want to check our Tips on Getting Legal Help For Your Invention.
So what do I need to know about getting patents outside the United States?
There are five key jurisdictions in the world that make up almost 90% of the patent applications filed worldwide. The United States Patent Office, the European Patent Office and the Japanese Patent Office are the predominant jurisdictions you need to focus on. In addition, the patent offices for China and Korea are also important jurisdictions. Focusing on these jurisdictions will probably give you protection in the major markets outside the United States.
The key for getting patent protection outside the United States is all determined by your patent strategy in the United States.
The key date that everything centers around is the date that you filed your patent application in the U.S. And there are two key international treaties that cover patents in the key jurisdcitions.
The first patent treaty you should know about is the Paris Convention. Once the U.S. patent application is filed, you have up to a year to seek international protection. You can typically file in the U.S. and within one year, file in most other countries in their patent offices and claim the benefit of the priority of the U.S. filing date.
The second key patent treaty is the Patent Cooperation Treaty ("PCT"). Under this treaty, you also have a year from the date you filed your patent application in the U.S., but instead of having to file at the patent office of each individual country, you can file one application with the U.S. Patent Office first and just designate the countries that you want to retain patent rights. If you do that properly, you will get an additional 18 months (so a total of 30 months) in order to go and file with the countries you are interested in. There are almost 150 countries that are members of the treaty. The PCT also helps streamline the process of applying for a patent in other countries that are members of the PCT through the Patent Prosecution Highway. One of the patent offices of the countries that are part of the PCT will review your patent application. They will do the initial searches to determine whether your invention is eligible for patent protection and send a report back to you on these findings approximately 9 to 16 months after it was initially filed. Once cleared by the receiving member country office, you can then choose which countries you wish to submit an actual patent application. The countries you choose will receive the report of the PCT. This will make the patent application process shorter since the initial search for your invention has already been done.
There are three key pieces of information you need to know for getting patents internationally. The first is that you will have some time after filing your U.S. patent application to file applications in other countries. So you do not have to make international filings immediately. The second most important thing you need to know is that the process for getting international patents is time consuming and expensive. You will need to file in all the various countries you are interested in, and in most cases ultimately having to hire lawyers in each of those countries to help you with your filing. And every one of those countries will have fees for filing patent applications and if you get patents, for maintaining these patents yearly for the duration of the patent. The third key point is that a good patent attorney with years of international experience and a strong network of relationships in the various countries will be invaluable in helping you navigate the process.
Listed below are links to the governmental patent offices for some of the key countries so that you can find out more about what will be required. Just click on the link for the country you are interested in to visit their site and find out what it will take to patent your invention in that country.
Helpful International Patent Resources
- Office of International Patent Cooperation - U.S. Patent and Trademark Office Information Page
- World International Property Organization - Patent Cooperation Treaty Page
- Guide to International Patent Protection - Extensive resource for learning more about international patent protection.
- World International Property Organization Patent Search Tool - Site where you can search worldwide patent applications and filings.
- Global Patent Search Network - Patent search tool for patents in China
- International Patent Classification and Terminology -Brief Guide to the IPC in 5 languages
- PCT Basics: Obtaining Patent Rights Around The World - Article by IPWatchdog.com
- PCT Patents And Other International Patents - Article on Bitlaw.com
- Canadian Innovation Centre -A not-for-profit corporation dedicated to assisting Canadian inventors and innovative companies. Their services include providing a clear, objective commercialization assessment at a reasonable cost.
- British Columbia Inventors Society - Registered non-profit society dedicated to helping inventors develop and market their ideas.
Foreign Government Patent Office
- European Intellectual Property Association - The European Intellectual Property Association (EIPAWEB) represents over 100 non-governmental and other not-for-profit organisations interested in protection the intellectual property of all europeans.
- Canada - Access to over 75 years of Canadian patent descriptions and images. You can search, retrieve and study more than 1,500,000 patent documents. Includes Canadian Patent Office Record
- Europe - Contains information on the organization, its sub-offices, patent information products, news, calendar of courses and seminars, and access to the Esp@ceNet searchable database of over 50 million patent documents. (In the Quick Access / Patent Information search box choose 'Free databases' and click 'Go'.
- Hong Kong
- New Zealand
- United Kingdom
- World Intellectual Property Organization