Foreign Patent Applications

Patent protection is territorial.  A US patent provides protection in the United States only.  Its protection does not extend beyond its borders.  If patent protection is desired outside the United States, foreign patent protection must be obtained.  In each country where patent protection is desired, a patent application must be filed in that country, unless a regional application is filed designating that country. 

Most countries have an absolute novelty requirement.  Generally speaking, this means that an activity anywhere in the world that makes an invention available to the public before the filing of a patent application bars the invention against patent protection.  Such activities include written publications, verbal public disclosures, public demonstrations or uses, and sales.  Subsequent to any of these activities, patent protection would be prohibited unless a patent application is filed beforehand. 

A patent application filed in a foreign country may claim priority to a US patent application, if the country is a convention country under the Paris Convention for the Protection of Industrial Property.  This is referred to as a right of priority.  Conversely, a US patent application may claim priority to foreign patent applications, referred to as foreign origin applications

A right of priority is a limited time right triggered by the filing date of an original patent application.  By making a claim for priority, the applicant receives the filing of the original patent application as the effective filing date of a subsequently filed application making the priority claim.  The period of time from making the priority claim in a patent application is six months from the filing date of the original patent application for design patent applications and 12 months for utility patent applications.  The claim also has to be made during the pendency of the original patent application.  In the United States, a claim for priority to a foreign patent application must be made in the oath or declaration, or an Application Data Sheet, filed with the US patent application, or filed within four months thereof.  See 37 CFR 1.55.

A foreign claim for priority to a US patent application may be made to a US provisional patent application or a non-provisional patent application.  However, a foreign claim for priority to a provisional patent application must be made within 12 months of the filing date of the provisional patent application.  This holds true even if the applicant intends to file a related non-provisional patent application claiming priority to the provisional patent application.  So, if the applicant intends to file US and foreign patent applications claiming priority to a provisional patent application, the applicant must file both the US and foreign applications within 12 months of the provisional patent application, or file an international patent application within the same time period. 

International patent applications function to postpone patent application filing decisions for US and/or foreign patent applications.  Such applications have to be converted to national stage applications within certain time frames.  For more information about international patent applications, see the International PCT Application page.

It should be noted that patent protection may be obtained in some foreign countries through the filing of a regional patent application.  A regional patent application is one which may have effect in a number of countries.  The European Patent Convention (EPC) is a treaty in which certain countries, referred to as contracting or member states, participate.  The treaty permits the filing and prosecution of a single application through one office, the European Patent Office (EPO), which is referred to as the regional patent office.  When a European patent grants, the applicant must validate the patent in each designated state or target country via the payment of examination fees, and in some instances, translation fees, depending on the country in which the patent application is being validated.

Filing and prosecuting a regional patent application is advantageous as it allows patents in a number of countries to be obtained without having to prosecute applications in all of those countries. The cost and complexity of obtaining protection is therefore greatly reduced.

Notwithstanding, filing and prosecuting foreign patent applications is costly.  A translation is often required at the onset of the filing.  Claims often have to be amended to comport with requirements of each particular country.  Fees are paid to foreign associates for attending to the filing of the applications, to the US counterpart for coordinating the filing, and to the national patent office in the country in which the application is being filed. 

Most foreign countries require the annual payment of annuities.  In some countries, the annuities may be deferred until a patent grants but most countries require annuity payments during the pendency of the applications. 

The cost for filing and prosecuting patent applications and annuities varies by country, and often by the number of years that have passed since its effective filing date.  For example, filing a foreign application claiming priority to a US patent application, ready for filing, in Canada may cost about $800 USD, whereas the same application, ready for filing, as a European patent application may cost about $8,000 USD.

If you have a question about foreign patent applications, askme at thedford@askmeip.com.