Can an Inventor Apply for Foreign Patent Protection after Filing a U.S. Patent Application?

The background situation is this: your company has a U.S. patent application on file and development in the U.S. market is going great. Based on your domestic market success, you want to expand the territorial reach of your patent portfolio to foreign countries as well.

Many foreign countries, such as China, have an absolute novelty requirement for filing a patent application in that country. This can give rise to issues when the U.S. application has already been filed. In addition, many companies begin advertising the new invention as soon as patent pending status is reached upon filing. Rightfully so, because “patent pending” can be a great marketing tool. However, foreign filings can be prevented from issuing due to both the prior U.S. filing and the public disclosures in the advertisements occurring before the foreign filing.

How can the company try for patent protection into these foreign countries?

Thankfully, several countries allow a time period for claiming priority back to a U.S. patent application. For example, China specifically allows a claim of priority back to a U.S. utility application for up to 12 months after filing the application. Note that this time period is only six months for a design patent application.

Alternatively, the company can submit a Patent Cooperation Treaty (PCT) application within 12 months of filing the U.S. utility application. Although this creates an additional filing with associated costs, the PCT allows for 30 months from the filing date of the first application in the chain (i.e. the priority date) to enter the national stage for most countries. The additional time generated is often about 18 months from filing the PCT. During this time, the company can evaluate foreign markets for viability or begin market testing of the new product.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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