Filing for Foreign Patents

Ahead of starting how to essentially file a patent application abroad, we want to outline three basic policies you need to keep in mind from the start.

Keep your invention a secret: U.S. patent law gives you one full year to file a patent application subsequent to public disclosure, but most other countries don’t allow you to have a patent if your invention was disclosed, without a confidentiality agreement, before you filed your U.S. patent application. Casually showing your homegrown prototype to Guest, your friendly neighbor may constitute such a disclosure. You don’t need a confidentiality agreement with your attorney. She’s already under a legal obligation of strict confidentiality.

Get a foreign filing license: As a U.S. citizen or legal resident, you can’t file for a patent application or generally disclose your invention abroad before you obtain a license (a permit to do so) from the U.S. Government. Such a license is routinely returned to you with your U.S. patent application receipt. You risk severe punishment even prison, and the inability to obtain a U.S. patent if you file an unauthorized application abroad.

If your invention relates to nuclear energy or national defense, the license may be delayed or denied. In critical cases, the Department of Defense may request a secrecy order, and you could be denied the right to a patent that would disclose sensitive information. However, the government does owe you reasonable compensation.

File foreign patent applications within one year from the filing date of your U.S. application: This is critical if you want to claim priority based on your U.S. filing date under the Paris Convention, as we explain later. If you don’t take advantage of this, you may lose your chance at foreign patents if your invention becomes known, either through publication of your U.S. application or the issue of your patent. 

The publication of an application or the grant of a patent constitutes a public disclosure of the invention. If this rule weren’t enforced, any unscrupulous individual who reads the published document could claim to be the inventor and file her own application. Foreign patent authorities don’t investigate priority of invention contests, as is done by the USPTO.

As long as you keep your invention confidential, you can file applications abroad more than one year after filing your U.S. application. But you don’t get the advantage of an early priority date and may lose the patent to someone filing overseas just ahead of you. The absolute deadline occurs when your U.S. Application is published, about 18 months after its filing date or when your U.S. patent is granted, whichever comes first. To sum it all up: If you keep the invention secret, you have about 18 months to file abroad, but if you go public, you have only one year from your U.S. filing date. Mark your calendar about ten months from your U.S. filing date to remind you that you only have two months left to start your overseas filing process, and also about five months thereafter to warn you of the publication deadline.

We want to add a fourth rule of our own: Let your patent attorney handle all your filing overseas through his/her own stable of foreign correspondents. Don’t wait until the last month before any deadline. She or the correspondents may need time to prepare translations and obtain certified copies of assignments.
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