Virtually all industrialized nations are signatories to the Paris Convention of 1883. This treaty establishes that if a utility patent application is filed in one of the signatory countries within one year of a first filing in another country, then the later filed application benefits from the earlier filing date. (For a design patent application, the relevant "convention" period is 6 months). Therefore, if an applicant files a patent application in the United States, and files one or more foreign applications within one year of the U.S. filing date, the foreign applications will benefit from the U.S. filing date.
This provision of priority is very useful given that most countries outside the United States have so called "absolute novelty" rules. These rules state that the patent application filing date must precede any public disclosure of the invention throughout the world. These countries do not provide the one-year "grace period" that U.S. laws provide. U.S. patent application filing deadlines are often primarily dictated by the desire for a filing date prior to public disclosure in order to preserve foreign patent rights.
The America Invents Act limits the grace period to material disclosed by the inventor of the later patent application rather than to information independently disclosed by others, meaning that the U.S. patent law has become more streamlined with the patent laws of most foreign countries. However, because most countries do not provide a grace period at all, it is important to file a first patent application before sharing the invention with third parties if foreign patent filings are intended.
Applicants who file foreign patent applications should be aware that statements made during foreign prosecution may be used by U.S. courts to define the scope of U.S. patent claims. Thus, care should be taken to coordinate U.S. and foreign prosecution of related patent applications.
There are regional as well as international patent application procedures available to patent applicants seeking to obtain foreign protection for their inventions.
In addition to the Patent Cooperation Treaty (PCT) application process, under the laws of the European Patent Convention a single patent application may be made by an applicant to protect the invention throughout Western Europe, providing significant savings in application filing fees. Currently, a European patent splits into individual national patents upon granting, so that enforcement of a European patent needs to be taken to the national courts of the individual countries. A unitary European patent system is currently in development that will allow for centralized patent enforcement if the patent owner chooses to maintain a unitary patent instead of individual national patents.
Some countries also offer utility models, sometimes called "Petty Patents." The term "petty " originates from the French word "petit" meaning "small." Utility models can claim the priority date of a patent application and may, depending on the country, provide a grace period where regular patent applications do not. While utility models include a description, claims, and drawings much like a patent application, they are mostly limited to a term of 10 years. Utility models are typically not examined, unless the owner attempts to enforce them. The protectable subject matter varies by country, but physical devices are protectable through utility models, while processes are typically excluded. Utility models are usually granted within one year of the filing date and save expenses because they do not require an extensive substantive examination in order to become effective. They are a viable alternative in technical areas, in which licensing is more common than litigation, where technology advances at such a fast pace that a 20-year protection is not needed.
To find out more please access our IP Primer page.