U.S. Patent vs. International Patent

If someone holds a U.S. Patent, but wants to also market a product internationally, can you tell me what is required. Does he need an international patent, and approximately how much does that cost?

Thank you for your help.

International Patent Protection for Your New Product
http://www.fredlaw.com/articles/ip/inte_0211_mpb.html


International Patent Protection
http://inventors.about.com/od/foreig...l_Treaties.htm


United States Patent and Trademark Office
http://en.wikipedia.org/wiki/United_...ademark_Office

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International Patent Protection for Your New Product
November 2002

By: Mary P. Bauman, Intellectual Property Group

You have filed a patent application in the United States covering your company's new product. When filing, your attorney asks whether you wish to obtain protection for your invention outside the United States. Should you?

When Do I Have to File for Non-U.S. Protection?

Many countries require that a patent application covering a new invention be filed before any public disclosure or public use of the invention is made. However, the Paris Convention Treaty, of which the U.S. is a member, provides the U.S. patent applicant with a twelve-month grace period in which to file in member countries. When a corresponding patent application is filed in a member country, it will be treated as though it was filed on the same date as the U.S. application. The application may be filed directly with a national patent office, a regional patent office (such as the European Patent
Office), or as an international patent application (PCT application, described below) designating up to four regions and 93 individual countries, covering a combined total of over 115 countries where patent protection may be obtained.

What is a PCT Application?

The United States has subscribed to the Patent Cooperation Treaty (the "PCT"). Under the PCT, an applicant can file an "international application." When filed, it is treated as the effective filing of separate patent applications in every PCT member country patent office designated by the applicant. The PCT application does not actually mature into a patent; a standard application eventually must be filed in the national or regional offices where protection is sought. The subsequent filing of a PCT application in the national or regional offices of choice is referred to as entering the "National Stage."

What is a "Search Report"?

When a PCT application is filed, a search of the prior art is conducted and a "report" is issued identifying the most relevant prior art. The results of this report may be useful in determining whether the invention is likely to be patentable in the country where protection is desired. The filing of a PCT application allows you to delay the final business decision on and the associated costs of national stage filings. Also, it generally assures that you will have the benefit of an international search report and preliminary examination at the time you make that business decision.

What is a Preliminary Examination?

Under the PCT, an applicant can choose to enter the National Stage at any time. However, in some member countries, a national or regional application must be filed within 20 months of the PCT filing date (the priority date), unless a Preliminary Examination is requested within the 19 months of the priority date. During the Preliminary Examination, an Examiner reviews the prior art references identified in the Search Report and the format and substance of the claims. He or she issues a "Written Opinion" regarding the patentability of the claims. The applicant can respond to this opinion with amended claims and arguments. The Examiner will consider these amendments and arguments and issue an International Preliminary Examination Report (IPER). A positive IPER may expedite review of the application in the countries where the applicant chooses to enter the National Stage. Several member countries now allow applicants to delay entering the National Stage until thirty months from the priority date without a Preliminary Examination.

How Do You File a Non-U.S. Application in a National or Regional Office?

Every national or regional office has its own rules and procedures. Typically, the filing process requires translation of the application and claims (and priority documents, if applicable) into the official language of the office where the application is to be filed and payment of official fees.

If Non-U.S. Patent Protection for the Invention is Desired, Where Should We File?

The most important decision you will have to make is whether to seek patent protection for your invention outside the U.S., and if so, in which countries. Factors to consider in making that decision include costs associated with filing, patentability of your invention in the non-U.S. patent office, enforceability of patents in the country of interest, and the likelihood that your company will exploit the patented invention in that country, either through licensing or direct manufacture and sale of the product.