Because a U.S. patent is only effective in the United States, it has no effect in a foreign country. An inventor seeking patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices, such as the European Patent Office. Almost every country has its own patent law, and a person seeking a patent in a particular country must apply for a patent in that country in accordance with the requirements of that country. For a listing of countries and their respective offices, please visit the World Intellectual Property Organization's Directory of Intellectual Property Offices.
Patent laws in many countries differ significantly from U.S. patent law. In most foreign countries, publication of an invention before the date of the application will bar the right to a patent (the "absolute novelty" rule). In addition, unlike the U.S., most foreign countries require maintenance fees to keep a patent application alive. Similarly, most foreign countries require that the patented invention be manufactured in that country after a certain period, which is usually three (3) years. If the patented invention is not manufactured within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
The Paris Convention for the Protection of Industrial Property (simply known as the "Paris Convention") is a treaty relating to patents which is adhered to by the U.S. and most other countries. The Paris Convention provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens (i.e., "reciprocity"). The Paris Convention also provides for the right of priority in the case of patents, trademarks, and industrial designs (or, "design patents" in the U.S.). This right means that, on the basis of a regular first application filed in one of the member countries, the applicant may, within a certain period of time (twelve (12) months in the case of first applications for patent, and six (6) months in the case of industrial designs and trademarks), apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application.
Thus, the later applicants will have priority over applications for the same invention that may have been filed during the same period of time by other persons. In addition, the later applications, being based on the first application, will not be invalidated by any acts accomplished in the interval, such as publication or exploitation of the invention, the sale of copies of the design, or use of a trademark.
The Patent Cooperation Treaty (simply known as the "PCT"), has been in force since January 24, 1978, and is adhered to by most countries, including the U.S. (notable exceptions, especially for medical device and electronics manufacturers, include Taiwan, Argentina, Uruguay, Bangladesh, and Myanmar (having no functioning patent system) -- patent applicants must file directly with those countries instead of under the PCT). The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application format.
The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides: (a) a search of the invention, and (b) a later time period within which the national applications for patent must be filed.
Under U.S. law it is necessary, in the case of inventions made in the U.S., to obtain a license from the Director of the U.S. Patent & Trademark Office before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the U.S. or before the expiration of six (6) months from the filing of an application in the U.S. unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six (6) months from the U.S. filing, a license is not required unless the invention has been ordered to be kept secret (a "secrecy order"). If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.
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