Since the rights granted by a United States patent extend only
throughout the territory of the United States and have no effect in a
foreign country, an inventor who wishes patent protection in other
countries must apply for a patent in each of the other countries or in
regional patent offices. Almost every country has its own patent law,
and a person desiring a patent in a particular country must make an
application for patent in that country, in accordance with the
requirements of that country.
The laws of many countries differ in various respects from the patent
law of the United States. In most foreign countries, publication of the
invention before the date of the application will bar the right to a
patent. In most foreign countries maintenance fees are required. Most
foreign countries require that the patented invention must be
manufactured in that country after a certain period, usually three
years. If there is no manufacture within this period, the patent may be
void in some countries, although in most countries the patent may be
subject to the grant of compulsory licenses to any person who may apply
for a license.
There is a treaty relating to patents which is adhered to by 140
countries, including the United States, and is known as the Paris
Convention for the Protection of Industrial Property. It provides that
each country guarantees to the citizens of the other countries the same
rights in patent and trademark matters that it gives to its own
citizens. The treaty also provides for the right of priority in the case
of patents, trademarks and industrial designs (design patents). This
right means that, on the basis of a regular first application filed in
one of the member countries, the applicant may, within a certain period
of time, apply for protection in all the other member countries. These
later applications will then be regarded as if they had been filed on
the same day as the first application. Thus, these later applicants will
have priority over applications for the same invention which may have
been filed during the same period of time by other persons. Moreover,
these later applications, being based on the first application, will not
be invalidated by any acts accomplished in the interval, such as, for
example, publication or exploitation of the invention, the sale of
copies of the design, or use of the trademark. The period of time
mentioned above, within which the subsequent applications may be filed
in the other countries, is 12 months in the case of first applications
for patent and six months in the case of industrial designs and
trademarks.
Another treaty, known as the Patent Cooperation Treaty, was negotiated
at a diplomatic conference in Washington, D.C., in June of 1970. The
treaty came into force on January 24, 1978, and is presently adhered to
by over 90 countries, including the United States. The treaty
facilitates the filing of applications for patent on the same invention
in member countries by providing, among other things, for centralized
filing procedures and a standardized application format.
The timely filing of an international application affords applicants an
international filing date in each country which is designated in the
international application and provides (1) a search of the invention and
(2) a later time period within which the national applications for
patent must be filed.
A number of patent attorneys specialize in obtaining patents in foreign
countries. In general, an inventor should be satisfied that he/she could
make some profit from foreign patents or that there is some particular
reason for obtaining them, before he/she attempts to apply for foreign
patents.
Under United States law it is necessary, in the case of inventions made
in the United States, to obtain a license from the Commissioner of
Patents and Trademarks before applying for a patent in a foreign
country. Such a license is required if the foreign application is to be
filed before an application is filed in the United States or before the
expiration of six months from the filing of an application in the United
States. The filing of an application for patent constitutes the request
for a license and the granting or denial of such request is indicated in
the filing receipt mailed to each applicant. After six months from the
United States filing, a license is not required unless the invention has
been ordered to be kept secret. If the invention has been ordered to be
kept secret, the consent to the filing abroad must be obtained from the
Commissioner of Patents and Trademarks during the period the order of
secrecy is in effect.