Is it necessary for an inventor to obtain patent protection outside the United States? For US inventors trying to commercialize their inventions domestically on their own, the answer might well be “No”. However, for at least some inventors, very real strategic advantages may be realized by pursuing more global patent protection. This blog article is the first of a series on that explores the pros and cons of preserving potential foreign patent rights, and why the Patent Cooperation Treaty (PCT) is usually the best vehicle to do it.
Many law practices see a high number of individual inventors and/or small businesses who are seeking to obtain patent protection for their invention. Often, such inventors know very little about patents; only that they have been told by various others that they should get one. Just as often, some inventors do not realize that a patent granted in the US does not confer any rights over that invention in foreign nations.
Many years ago, the only way for a US inventor to preserve his or her potential foreign patent rights, was to retain foreign patent counsel in each country of interest to prepare and file a patent application — in the native tongue of the country in question. Moreover, to preserve the US priority filing date for each foreign patent application, such a foreign filing had to occur within one year of the filing of the related US patent application. For most people and organizations — even very large, deep-pocket corporations — this process was extremely unsatisfying: It forced a patent applicant to make key decisions on how to spend a lot of time and money before the patent applicant really had any inkling as to whether any patent authority (particularly the United States Patent and Trademark Office) thought that the invention was even patentable. Since most individual inventors did not have extra bags of money lying around to invest in multiple patent applications in multiple nations, there was a need for a better alternative.
In the 1970s, the Patent Cooperation Treaty (PCT) was created to address this problem. Very basically, the PCT allows a patent applicant to file one patent application — in the inventor’s own language¬ — which in turn will preserve the potential patent rights in each of the over-140 member nations, including the US. An invention with a pending PCT application has not only obtained “Patent Pending” status in the US, but also “Patent Pending” status in all PCT-member nations, which may be attractive to businesses looking to buy or license the potential patent rights globally.
Future blog articles will discuss various other strategic advantages (as well as some disadvantages) associated with the filing of a PCT application in lieu of, or in addition to, a US patent application. At least some of these advantages can be realized by the patent applicant even if the applicant’s goal is to only obtain a US patent.
