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International Patent Protection Strategy

In today’s global economy, it is important for inventors to consider obtaining international patent protection to prevent others from making, using, and selling their invention in multiple countries. However, a patent application typically needs to be filed in each country where protection is desired, which becomes very costly very quickly. To optimize costs and reduce the burden in filing multiple patent applications internationally, it is important to keep these points in mind when consulting with your patent practitioner:

  1. Know that the public disclosure grace periods vary amongst countries. Generally speaking, a patent application should be filed before a public disclosure or sale of the invention. In the U.S., a public disclosure or sale of the invention triggers a one-year grace period in which a patent application may be filed. However, in other countries, an inventor may immediately lose their right to patent protection upon such a public disclosure or sale.
  2. Determine the countries in which you want to obtain patent protection. This will help your patent practitioner determine whether filing an international patent application through the Patent Cooperation Treaty (PCT) would be beneficial. As a generalization, the PCT provides a more streamlined and cost-effective way to file a single patent application in several PCT-participating countries.
  3. Hire a patent practitioner that has experience in drafting international patent applications. Although U.S. patent practitioners cannot file and prosecute patent applications outside of the U.S., an experienced patent practitioner will be familiar with foreign invention disclosure requirements in order to draft a more uniform patent application. This way, the same U.S. patent application may be suitable for filing in several countries, thereby reducing your foreign legal fees.
  4. Ask your patent practitioner if they have foreign connections. Experienced patent practitioners typically have trustworthy contacts at international law firms that can quickly and accurately file your patent application in that other country.

The above four points are only a few of many to be aware of when filing a patent application in multiple countries. Ultimately, if you want international patent protection, it is important to hire a patent practitioner familiar with international patent strategy.

Category: Intellectual Property, Patents