How to Obtain Worldwide Patent Protection

Hi, I'm Rich Beem. I'm a patent attorney in Chicago. I'd like to talk with you about international patents. How do you get worldwide protection for your invention? Well, if you're an American, it all starts in the US. The key date is your US filing date for your patent application. Once we file the US patent application for you, there is up to a year, under international treaties, to seek international protection. And that's under two key treaties. One is the Paris Convention, which is over a hundred years old. It has been very successful. You can file in the US and within one year, file in most other countries of the world in their patent offices and claim the benefit of the priority of the US filing date. The other treaty that is very important for you is the Patent Cooperation Treaty which, in the patent field, we call PCT. Under the PCT, you have that same one year, but instead of having to file in every patent office of the world, you can file one PCT patent application in the US Patent & Trademark Office and you can designate all the countries of the world saying "I want to retain my right" to get patents in those countries. And what that PCT application does is it buys you an additional 18 months. So you now have a total of 30 months, or two and a half years from the date that you filed the US patent application until you actually have to go into each of the other countries or jurisdictions. And one of the jurisdictions is the European Patent Office, or the EPO. And by going into there within that 30 months, you can then proceed into getting patents in every one of those countries. There are five leading jurisdictions in the world for patents. One is the US Patent & Trademark Office, one is the European Patent Office. Another is the Japan Patent Office. Those three together make up what's called “the Trilateral,” and those patent offices work very closely together. The fourth and fifth are China and Korea. Those are very important jurisdictions for patents. And between those 5 jurisdictions, that's where 90% of the patent applications in the world are filed. So, first, get your US patent application on file. Then, I say, get out and sell your product. See if you can make some money on it, because going international can be expensive. The PCT patent application does not cost all that much and it buys you additional time. But before you go into Europe and Japan, Korea, China. Before you go into those countries, you want to make sure that you have something that's economically worthwhile. Because at that point, we have to hire patent attorneys in those other countries, we have to pay translation costs and filing fees. Every country wants a filing fee, and they also have maintenance fees, or taxes, or annuities that have to be paid on patent applications, from the date of filing in many countries. So that's how international patents work. Get your US patent application on file – that's the key date – and then you have time to think about it. But get out and sell that invention to make sure that it's worthwhile to proceed in the other countries. I'm Rich Beem. When you have international patent matters, call me because I handle those kind of patent matters regularly, day in and day out. I can be reached at my office at 312-201-0011. Thank you.