U.S. patents are enforceable only in the United States. To enforce a patent in other countries, you have to obtain a patent in those foreign countries. However, a patent application filed in the United States does provide patent pendency-type patent protection for a limited time.
Where are patents enforceable?
A patent is territorial which means that a U.S. patent can only be enforced against infringing conduct that occurs in the United States. That same concept is true for patents granted by China, Canada, Australia, Europe, and Mexico. To enforce a patent in a foreign country, you have to obtain a patent in that foreign country.
In the United States, if an infringer’s conduct affects a U.S. patent owner, then they may be liable for patent infringement. Here is an example where lost foreign profits were recoverable by the patent owner.
Does my U.S. patent application give me rights in other countries?
Yes, by filing a U.S. patent application, you have patent pendency-type patent protection in other countries by way of a treaty (i.e., Paris Convention or Patent Cooperation Treaty). Patent pendency type patent protection gives you a priority date. As between two entities that filed a patent application for the same invention, the person with the earlier priority date or filing date will be awarded the patent. The first filed patent application is prior art to the second filed patent application.
On the international stage, this same principle applies. As between two entities that filed a patent for the same invention in two different countries, the person that filed the patent application first would be awarded the patent.
For example, let’s assume you filed your patent application on January 1 in the United States. Another inventor filed a patent application in Canada on February 1 of the same year. Your patent application becomes prior art to the other inventor’s patent application filed in Canada. The patent application that you filed in Canada would be awarded the patent.
How do I secure a patent in other countries?
You must file a patent application in the countries in which you want to obtain patent protection. The typical route is to file the United States patent application first. Within one year, you need to file a patent application in those other foreign countries in which you want to obtain a patent. Each country will cost you about a few thousand dollars which would be cost-prohibitive for most inventors and even businesses.
You can delay the decision as to which countries to file in by filing a PCT application. A PCT application isn’t really a patent application because PCT doesn’t grant a PCT patent. There is no such thing. Rather, the PCT application allows you to file a patent application in a foreign country 18 months later. That gives you more time to figure out which countries you might want to spend money on if there is a significant business justification.
Should I secure a patent in other countries?
Personally, for the solo inventor, I’m not a proponent of filing directly in other foreign countries. In some countries such as Europe and China, it is difficult to get a patent with a broad scope of patent protection. Also, unless you can monetize your invention in those other countries, you will waste your money by filing in those other foreign countries.
However, I can’t say that it is a waste because I have had solo inventors be successful because they did file in another country. However, just based on my own 18 years of experience, most don’t make money in foreign countries.
Although I’m not a proponent of filing multiple foreign countries, I am a proponent of filing a PCT application because of its low cost to file and the right to file in other countries 18 months later. Put simply, the pct application will cost you a few thousand dollars. Plus, the PCT application reserves your right to file in more than 160 foreign countries 18 months later. A prospective licensee might find the ability to file in another foreign country worth it. For these reasons, I’m a proponent of filing a PCT application if it makes business sense.