Fay Sharpe LLP: Why your U.S. patent won’t help you overseas Featured

4:03pm EDT October 29, 2013
John S. Zanghi, Partner, Fay Sharpe LLP John S. Zanghi, Partner, Fay Sharpe LLP

Some mistakenly believe that U.S. patents travel the world with universal protection, but countries work independent of each other when granting patents. That is why, when conducting business internationally, it is important to understand how intellectual property protections are procured in each country.

According to the Paris Convention, a treaty signed by the U.S. and 174 other countries that protects industrial property, a patent granted in one signatory country does not mean it must be granted in another.

“U.S. patents are independent from those granted by foreign countries, so protection is advisable in each market a patented product will be sold,” says John S. Zanghi, a partner at Fay Sharpe LLP.

Smart Business spoke with Zanghi about acquiring international patent protection.

How does the Paris Convention apply?

National treatment and right of priority are two important clauses of the Paris Convention with which businesses should be familiar. National treatment says member countries must grant the same patent protection rights to foreign citizens of other signatory countries as it grants to its own nationals. Nationals from a non-signatory country also are entitled to national treatment so long as they have a ‘real and effective industrial or commercial establishment in a contracting state.’

‘Rights of priority’ refers to the length of time an applicant can take to file a patent for the same invention in two countries. For patents and utility models, an applicant must file additional applications within 12 months. A patent office handles these as if they were filed on the same day as the original application, allowing time to determine the commercial viability of the patented product in additional countries.

An applicant seeking priority based upon an earlier filing is protected from any subsequent disclosures, such as publications, that occurred since the first patent was filed.

Why can’t one international patent application grant protection in all countries?

People have long discussed the idea of a single international patent application, but it’s not available.

Applicants can file using the Patent Cooperation Treaty (PCT), a multilateral agreement administered by the International Bureau of the World Intellectual Property Organization, which allows applicants to file a single application for patent protection in multiple countries. Applicants select the countries or regions where they would like to receive protection. The application is submitted to each office for review, which manages the granting of patent protection individually. Applicants must adhere to the requirements of a particular country and prosecute each patent separately from other countries.

For patent protection in Europe, filing regionally through the European Patent Office (EPO) is an option. The EPO is a collection of 38 European countries that agreed to establish a single procedure for the grant of patents. A European patent gives its proprietor the same rights as would be conferred by a national patent granted in any participating country. Ultimately, if granted, the European patent will grant in the selected European countries. Any infringement is dealt with by national law.

What needs to be done to file a patent in a foreign country?

Obtain legal counsel in each foreign country because each manages its own patent protection. Local counsel has knowledge of local requirements and can assist in filing and prosecuting an application through to the grant of the patent. They also are able to process applications in a timely manner to ensure you don’t miss a filing deadline.

Which patent and patent laws apply if a U.S. business is sued in another country?

Each issuing country manages and maintains patent protection. If someone sues you for infringement outside of the U.S., the laws of that country govern. However, if the country is a Paris Convention signatory, it must grant the same protection to all non-citizens as its own citizens. It is important to understand how the various international treaties and conventions operate, as well as the filing requirements of each country.

Filing a patent is not an insignificant cost, so it is imperative to understand your obligations and risks wherever you conduct business or in countries where significant competitors conduct business.

John S. Zanghi is a partner at Fay Sharpe LLP. Reach him at (216) 363-9000 or jzanghi@faysharpe.com.

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