Patent Protection Outside of the United States: Claiming Priority to a US Patent Application
When you file a patent application in the United States, you may want to extend your protection to other countries, ensuring that your invention is safeguarded internationally. Fortunately, there are several ways to claim priority to your US patent application and seek protection in other jurisdictions. This process allows you to maintain a consistent filing strategy across multiple regions and safeguard your intellectual property globally. Below are the primary options for seeking patent protection outside of the US while claiming priority to your US filing.
Bay State IP works with a global network of foreign associates to assist our clients in International Patents and in securing protection outside of the United States for both Utility and Design applications. Our network of foreign associates includes law firms and attorneys in Europe, Asia, North and South America.
- Paris Convention
- Patent Cooperation Treaty (PCT)
- Regional Patent Systems
- Direct National Filings
- Other Considerations
Paris Convention for the Protection of Industrial Property
One of the most common routes for securing international patent protection is through the Paris Convention, which allows you to claim priority based on your US patent application within 12 months of its filing date. By filing a patent application in any of the 177 member countries of the Paris Convention, you can receive the same filing date as your original US application. This means you won’t lose out on any potential rights, as the subsequent filings in foreign countries will be treated as if they were filed on the same date as your US application.
Key Features:
- 12-month priority period from the US filing date.
- Available for patents in over 177 countries.
- Simplifies the process of obtaining protection in multiple countries.
Benefits:
- Provides a unified filing date for multiple countries, preventing your invention from being considered publicly disclosed before you file in foreign markets.
- Allows for more time to decide which foreign jurisdictions you want to pursue protection in.
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) is an international treaty that provides an alternative to filing individual applications in each country. With a single PCT application, you can seek patent protection in up to 156 contracting countries worldwide. The PCT allows you to claim priority to your US patent application, extending your filing deadline for foreign protection to 30 or 31 months (depending on the country) from the priority date of the US filing.
Key Features:
- 30-31 months of additional time to enter national phases.
- One application covering multiple countries.
- The option to file in virtually all major markets globally.
Benefits:
- Centralizes the filing process and streamlines the complex international patent system.
- Delays the high costs of translating, filing, and prosecuting in multiple countries for 30+ months, giving you time to assess the market potential.
- The PCT process includes an international search and preliminary examination that can provide valuable insights into the patentability of your invention worldwide.
Regional Patent Systems
Several regional patent systems allow you to file a single application that provides protection in multiple countries within a particular region. These systems enable you to claim priority to your US application while simplifying the process of obtaining patents in a geographic area.
Key Features:
- European Patent Convention (EPC): Filing a European patent application through the European Patent Office (EPO) allows you to seek protection in any of the 38 EPC member countries. You must file within 12 months of your US filing to claim priority.
- African Regional Intellectual Property Organization (ARIPO): For protection in several African countries, ARIPO offers a regional filing system for patents that can be used to claim priority to your US application.
- Eurasian Patent Organization (EAPO): For protection across several countries in Eurasia, a single Eurasian patent application allows you to claim priority based on your US filing.
Benefits:
- Streamlines the patent application process across multiple countries within a region.
- Reduces the number of individual filings, translating into savings on filing fees and administrative burdens.
Direct National Filings
If your target market lies in one or a few countries that do not participate in the Paris Convention or PCT, you may consider direct national filings. In this case, you can file a patent application in the country of interest and claim priority to your US filing within 12 months of the US application’s filing date.
Key Features:
- Priority claim to your US filing within 12 months.
- Tailored protection for a specific country or region.
Benefits:
- Full control over where to seek protection.
- Direct access to each country’s patent office, allowing you to adapt to specific local requirements and procedures.
Other Considerations
While the above methods are the most common ways to claim priority to your US patent filing, it is important to consider other factors in your international patent strategy:
- Translations: Some jurisdictions may require you to translate your patent application into the local language.
- Examination Procedures: Different countries or regions have distinct examination processes and timelines. Ensure you are prepared for these differences.
- Costs: International patent protection can be costly, both in terms of filing fees and maintenance fees. You should carefully assess which jurisdictions align with your business strategy to make the process cost-effective.
Conclusion
Securing patent protection outside of the US is an essential step for companies and inventors who want to maximize the value of their intellectual property in international markets. By claiming priority to your US patent application, you can simplify the process, extend your filing window, and protect your invention in multiple countries with confidence. Whether you choose the Paris Convention, PCT, or regional options, each method provides a pathway to safeguard your innovation on a global scale. To ensure the best strategy for your invention, it’s crucial to consult with a patent attorney who can guide you through the process based on your unique needs and goals.
Get Started with Bay State IP
If you have an invention you wish to protect, or if you have questions about the patent process, Bay State IP is here to assist you. Our team will work closely with you to determine the best strategy for obtaining a patent and protecting your intellectual property.
