To assist our clients in protection of their intellectual property abroad, Larson & Larson has developed an international network of trusted foreign associates.
Patent protection is obtained on a country-by-country basis. There are no international patents. Thus, an applicant must choose in which countries to file applications.
An applicant may select one of two paths to obtain foreign patent protection. Options include:
- Patent Cooperation Treaty (“PCT”) application; and
- National or regional applications in foreign jurisdictions (“foreign applications”).
Before moving to discussion of the options, understanding the deadlines is critical.
PCT applications create additional time
The Patent Cooperation Treaty (PCT) creates a common procedure to file a patent application in any of its member countries. A PCT application acts as a link that joins one or more U.S. applications to one or more foreign applications. For example, linking a U.S. patent application to a Canadian patent application.
The use of a PCT application allows the applicant to delay the costs of filing foreign applications, while providing additional time to determine where to file foreign patent applications.
With or without a PCT application, individual foreign applications will be required to obtain patent protection in their respective countries. The process of preparing, filing, and prosecuting these foreign applications is discussed next.
Foreign applications – Preparing and filing
Foreign patent applications require the use of foreign agents. Agents within each chosen country cooperate with Larson & Larson to amend the U.S. patent application, or PCT application, to conform to the requirements of the country.
In some countries, the filing of an application and the request for examination are different steps. Larson & Larson generally proposes requesting examination at the time of filing to avoid delaying the patent process.
Foreign applications – prosecution
Following the filing of an application, and a period of time that varies by country, patent prosecution begins. The cost of prosecution will be the sum of costs incurred by foreign associates and our time.
Whenever possible a quotation will be provided prior to starting work. Foreign agents may incur fees to docket and review correspondence from the patent office prior to our seeking approval for you. Attempts are made to minimize these costs; the savings are passed on to the client.
Patent issuance
Patent issue fees vary from country to country and are subject to change at any time by the respective patent office.
Annuities
Foreign applications and issued patents often require yearly payment of annuities. Such annuities may come due during the application process, despite being prior to the issuance of a patent. Unlike maintenance fees in the U.S., annuities are due yearly.
The process of filing patent applications in foreign jurisdictions is complex and detail-oriented. Larson & Larson has decades of experience and reliable foreign agents and stands ready to assist.