• Should I file my patent application in the United States and in foreign countries?

    A common misconception is that if an inventor files for patent protection in the United States and obtains a US patent
    then they are protected in other countries from someone making, using, exporting, offering for sale, or selling the invention. A United States patent only will give you a monopoly over the invention within the borders of the United States.

    Before going and filing your patent application in all major countries, there are a few questions that you should ask yourself. For starters, will this invention have any kind of commercial success in foreign countries or are you just filing for the protection? Remember that filing a patent is quite expensive and filing it in multiple countries will significantly increase those costs. By not having patent protection in a foreign country allows anyone to make, use, export, offer for sale, or sell the invention in that country. However, United States law protects the inventor from having someone make the patented invention in a foreign country and then import it into the United States for sale. The reasoning for this is that a patent grants you a United States monopoly and if someone was to bring the invention into the country that would be infringing on your monopoly even if they legally produced the goods in a foreign country.

    Before you make the decision about filing in a foreign country, there are several international treaties that you need to be aware of. For starters, the most important is the International Convention for the Protection of Industrial Property, more commonly referred to as the Paris Convention. This treaty was originally signed in Paris in 1883 by the industrialized and has since been joined by other nations. The basic idea of the treaty is that all member nations have reciprocal patent filing rights. Reciprocal patent filing rights means that the date you file a patent in your home country, you have one year from that date to file in a member nation and maintain your original filing date from the United States. At first this might not seem like it is that important; however, when dealing with priority battles over who was the first to invent a lucrative invention, it becomes quite important.

    The second most important international agreement is the European Patent Convention. The European Patent Convention, which has been agreed to and signed by the majority of the European nations, created the European Patent Office. The European Patent Office allows an inventor to file their invention in a central patent office, and if the patent is issued, the patent becomes valid in all of the European nations that have signed the agreement, assuming that you want protection in each country and agree to pay the maintenance fees for each country.

    The third international treaty that you need to be familiar with is the Patent Cooperation Treaty. The Patent Cooperation Treaty is a treaty that most of the industrial nations around the world have entered into. The United States signed the agreement in 1978. The purpose of the Patent Cooperation Treaty is that an inventor from the United States can file his or her patent application in the United States Patent Office and within the one year, file an international application which will cover all of the nations that have signed the Patent Cooperation Treaty. Once this international application is filed, a patentability search is conducted to determine if the patent can be obtained. This search does not give the inventor a patent but instead explains if the searcher feels the invention is patentable within the member nations. If an inventor then decides to file in those countries, he must then file an application in each country that he want protection in.

    Understanding the basics behind the treaties and how they impact patent rights is key. However, you still must always ask yourself if this invention will have enough commercial success in the foreign country to make filing internationally necessary. Many inventors simply feel that their invention is the greatest invention ever and there is no possible way that it will fail. It is important to get over this common misconception. Just because you have a patent does not mean that you will be able to make a profit off of it. With the extremely high costs of filing and maintaining patents, you must be absolutely sure before you file for foreign patents.
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