Virtually every country in the world has its own patent system wherein people living in those countries and companies operating in those countries can have their inventions protected under that country’s patent laws.
What all inventors must keep in mind is that their rights when they file a patent application in their home countries can be expanded. For example, if a U.S. Patent Application is filed, then under the Paris Convention the inventor is entitled to a right of priority and is given one year to file his or her U.S. Patent application in a foreign country that is also a member of the Paris Convention. The filing date in the foreign country is, under the Paris Convention, treated as if the application was filed on the same date as the U.S. patent application. There are about 130 countries that are members of the Paris Convention, so an inventor can file the patent application in the U.S. Patent and Trademark Office and then has one year to foreign file the same patent application in the foreign counties of interest.
There is a plurality of reasons why an inventor might want to foreign file his or her U.S. patent application. Here are some of the reasons:
- There is no such thing as a “Global Patent” that provides an inventor with patent protection in every country in the world. Thus, a U.S. patent application and any U.S. patent issuing from the application do not provide the inventor with global patent rights. Rather, the inventor must file patent applications in the countries of interest in a timely manner in order to secure patent protection in those countries. So, inventors should consider filing foreign patent applications if they have plans of expanding operations into foreign countries.
- If the inventor will be selling the patented product in a particular foreign country, for example the United Kingdom, then it would be a good idea to file a patent application in the U.S. Patent Office, and then within one year file the patent application in the United Kingdom Patent Office and claim priority rights back to the U.S. filing date.
- Another good reason to foreign file your patent application would be to block competitors. For example if you have a competitor in Spain, then it might be a good idea to file your patent application in Spain so that your competitor is prevented from making and selling the product in Spain.
- The majority of the value of many companies is tied to the intellectual property that the company owns. By foreign filing patent applications the company builds its patent portfolio and thus the value of its intellectual property assets. This makes the company worth more, and may make it easier for the company to secure loans and will make the company worth more if the company is sold.
- If the company files patent applications in foreign countries and obtains patents in these countries, then the company can license the patents to more third parties in order to generate increased licensing revenue.
Please note that this information is shared as guidance only and is not intended to be legal advice for your particular business and circumstances. For more information on IP and to access videos about IP, visit our youtube page.