International Patent Lawyer NYC Francelina M. Perdomo Klukosky - Perdomo Law
International Patent Law Firm, Perdomo Law in Manhattan New York, NY 10007
Issued patents give you the right to exclude others from practicing your invention, which means you can stop others from manufacturing, selling, or importing any product or thing covered by the claims. But patents have territorial application only. This means that a national patent from any country is only valid in that country. So if you have US patent, you cannot stop infringers in any other country with your US patent. For example, if you have a US patent on a product, and someone else starts selling a copy of your product in Canada, you cannot sue to stop the infringement unless you have a Canadian patent.
So, a question that every inventor should be asking themselves is where they want an issued patent to protect their market or license the product. A general rule is you should seek patent protection in any country where your product is likely to be sold or manufactured. Of course, this is tempered by budgetary restraints.
There are two primary means of initiating patent application filings in other counties.
PCT International Patent Application Filings
The Patent Cooperation Treaty (PCT) is a treaty administered by the World Intellectual Property Organization, a UN agency based in Geneva, Switzerland. PCT patent applications are normally filed in regular national patent offices, such as the USPTO and all other major patent offices.
A PCT patent application is usually a non-provisional patent application, filed no more than 12 months after the earliest priority date.
The essential feature of a PCT patent application is that the application provides priority rights in essentially every country in the world (there are only a handful of counties not part of the PCT, and none of these are major economies). This means that you have the right to pursue a national stage patent application in any country that is a PCT member.
The other major feature of a PCT patent application is that national stage elections and fees must be paid (including translations) 30 months after the priority date. This provides patent applicants with extra time to confirm the viability of the product and find financing or a licensee.
Direct Foreign Patent Filings
The alternative to a PCT filing is simply filing a national patent application in any county where you want an issued patent within the 12-month period after the priority date. This method short-cuts the PCT process but does not give an applicant 30 months to defer fees and translations. This may be a better approach for an applicant who is confident of where they want to enter, and who only wants to file in one or two additional countries.
For example, a US applicant with a product that they only intend to market in the US and Canada would find it less expensive to file a Canadian national patent application and not go through the PCT filing process.
Contact International Patent Attorney in NYC, Francelina Perdomo, for a Case Assessment
This is a very brief summary of international patent filing procedures that applicants may find helpful in understanding the process. There are many nuances that we cannot briefly discuss here. Please contact us to arrange a consultation to help you develop a strategy that fits your business goals and budget.
Please contact us for a case assessment.
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