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Patenting an Invention in A Foreign Country

Once you have gotten your patent application on file and have taken steps to have your invention manufactured and distributed in anticipation of receiving a patent, the next step will be either to file your patent in one or more other countries or to deal with the first substantive response from the patent office to your application.

The reason for filing an application in other countries is that a patent will give you monopoly only in the country where you have filed the patent. Therefore, anyone in a foreign country will be able to make, use and sell your invention.

There are important treaties and arrangements to be aware of before filing a patent application in a foreign country. Most countries are members of the “Paris Convention,” which gives you the full benefit of your filing date in your home country, provided you file in a foreign convention country within one year. In addition, most of the countries of Europe have joined the European Patent Convention, which has a single patent office called the European Patent Office to grant European patents, which are good in all member countries provided they are registered and translated in each country. Lastly, most industrialized countries are also members of the PCT-Patent Cooperation Treaty—which enables applicants to file a relatively economical international application in their home country within one year of their home-country filing date.

If you file a patent application in any one, member jurisdiction of the Paris Convention you can file a corresponding application in any other member jurisdiction within one year of your earliest filing date (six months for designs). Your application in each foreign jurisdiction will be entitled to the home country filing date for purposes of over coming prior art. If you fail to file any foreign applications under the Convention within the one-year period, you can still file, if you have not sold, published, or patented your invention yet. However, any such late application will not get the benefit of your original home country filing date, so any relevant prior art that has been published in the meantime can be applied against your applications. That is once you miss the one-year deadline, your foreign application will not be entitled to the filing date of your original application.

Under the European Patent Convention (EPC), you can make one patent filing in the European Patent Office (EPO) within one year of your earliest filing date. When the filing matures into a European patent, it will cover your invention in the countries selected when registering. Your elective European Patent Office filing date will be the same as your original home country filing date. Once your application is on file, the European Patent Office will subject it to a rigorous examination, including an opposition publication 18 months after filing. If your application is allowed, you will be granted a European patent that lasts for 20 years from your filing date. Your patent will be valid automatically in each member country of the European Patent Convention that you have designated in your application.

Under the Patent Cooperation Treaty (PCT), residents can file in their home country and then make a single international filing in the patent office within the one-year period. This can cover all of the PCT jurisdictions, including the European Patent Office. Eventually, you must file separate or “national” applications in each PCT jurisdiction (including the EPO) where you desire coverage. These separate filings, which must be translated for non–English-speaking jurisdictions, must be made for most countries within 30 months after your U.S. filing date. If you file a PCT application, the patent office acting under the PCT, will make a patentability search of your invention and will give you an indication of its patentability. The PCT affords you a 30-month extension in which to file in most PCT countries or the EPO. In addition, you can file your first application under the PCT and then file in any PCT jurisdiction (including the U.S.) within 30 months from your PCT filing date. Further, since the PCT is a member of the Paris Convention, if you file with the PCT first, you can file in any non-PCT Convention jurisdiction within one year from your PCT filing date.
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