Know the Law: Preserve Patent Rights in the United States and Foreign Countries

Scott C. Rand
Counsel, Corporate Department
Published: Union Leader
April 5, 2010
Image of Intellectual Property box

Q:  I have an invention and plan to disclose it at a trade show.  What do I have to know and what steps do I need to take to preserve patent rights in the United States and foreign countries?

A:  To maintain your ability to obtain patent protection in the U.S. and abroad, it is important to file a patent application covering your invention in at least one country prior to publicizing or attempting to commercialize the invention.

Patents are territorial in nature, so a patent granted in one country will not afford protection in other countries.  In addition, each country has its own laws governing patentability.  One aspect of U.S. patent law that distinguishes the U.S. from many other countries is a one-year “grace period” allowing inventors to publicize and commercialize their inventions before filing a patent application.  Many, if not most, foreign countries do not offer any such grace period and require a patent application to be filed before an invention is publicized or commercialized.

Therefore, an inventor only interested in a U.S. patent may publish, publicly disclose or use, sell, or offer to sell the invention and still seek U.S. patent protection, so long as the U.S. patent application is filed within one year from the earliest date of such activity.  U.S. patent protection is barred, however, if the inventor fails to file a patent application within the one-year period.

The advantage of the U.S. grace period is that it allows inventors to test the market for up to a year before incurring the expense of filing a patent application.  The disadvantage is that foreign patent protection may be precluded.  Therefore, to preserve your foreign filing options, you should refrain from publicizing or commercializing the invention until you have filed a U.S. patent application.

Once your U.S. application is filed, you may proceed with publicizing or commercializing the invention.  Under the Paris Convention, inventors who file first in their home country may take up to a year to complete foreign filings.  As an example, an inventor could file a U.S. application prior to any publication or commercial activities and wait up to one year to file foreign applications.  Under the Paris Convention, the foreign countries would honor the U.S. filing date, so long as the foreign applications are filed within one year from the U.S. filing date.

The Patent Cooperation Treaty, (“PCT”), provides yet another option for preserving foreign patent rights.  Under the PCT, an international application may be filed to extend the deadline for completing foreign filings, in most cases up to 30 months.

Note that while most major countries have joined the Paris Convention, the PCT, or both, there are exceptions, so consult with a patent attorney if you are interested in a particular country.