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Patenting Inventions in Foreign Countries

Inventors are often interested in patenting their inventions in foreign countries in addition to the United States.  While the patent process in most countries is similar to that in the U.S., some provisions of foreign patent laws are not.  One significant difference between U.S. and foreign patent laws is that most foreign countries require a patent application be filed prior to the first public disclosure of the invention.  This contrasts with U.S. patent law which provides the inventor with a one-year grace period after the first public disclosure of the invention in which to file a patent application.  So inventors who take advantage of the U.S. grace period may actually lose the ability to protect their inventions in many foreign countries. 

 

Fortunately, most foreign countries will provide the foreign patent application with an “effective” filing date of a patent application previously filed in another country.  The previously-filed application must be for the same invention and must have been filed within a limited time period prior to the foreign application filing.  For example, if a patent application is filed in the U.S., and then a foreign patent application on the same invention is filed within the limited period, the later-filed foreign application will be given an effective filing date equal to the filing date of the earlier U.S. application.  If the filing date of the U.S. application was prior to any public disclosure of the invention, then the ability to obtain patent protection in the foreign country is not compromised even if the invention was publicly disclosed after the U.S. application filing date but before the foreign application was filed. The limited time period is generally 12 months, but can be extended to approximately 30 months by filing a Patent Cooperation Treaty (PCT) application.

 

Submitted by Attorney Jeff Proehl

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