Manufacturing Abroad? International Patent Implications for the Early-Stage Company

Do I need international patent protection?

Though the location of manufacture is an important consideration for international patent protection, I would ask: “Where do you plan to sell your product?”  If your product is to be sold around the world, you should be considering international patent protection immediately for several reasons.

Let’s say you are manufacturing in Canada, and selling your product in the US and EU, with a patent-pending status in the US.  If you don’t have patent protection in Canada, or the EU, that means that your product is “fair game” for competitors to replicate and resell in those jurisdictions.  A US patent, if granted, will allow you to prevent competitors from importing and selling your patented invention in the USA, but it won’t give you the ability to enforce your US Patent rights in foreign countries.

If you plan to sell internationally, then you should consider an international patent application today and begin taking the right steps to ensure that your rights are preserved internationally.  If all your considering is manufacturing abroad, I wouldn’t press the issue too much at this stage.

Most importantly, if the international market IS within your future (near or far), there is a HIGH likelihood that you will end up forfeiting your patent rights in foreign jurisdictions if you don’t take the proper steps now under legal counsel.

For instance, while the US allows you to make public disclosures of your invention before filing for patent protection, most other countries will deny you any patent rights if you’ve made public disclosures of your invention before filing for patent protection.  In this scenario, you would need an international patent application on file (or a US application that can be converted to an international patent application within 12 months of its priority date) BEFORE making any public disclosures.

How does an international patent application work?

An international patent application (also known as a PCT application for the Patent Cooperation Treaty) is a standardized procedure of having your patent application examined across the countries that are members to the Patent Cooperation Treaty (that’s most of the economically developed countries in the world).

Here is how the PCT Works. A patent law firm would file a single PCT application for World-Wide (almost all of the developed countries who are member to the PCT) Preliminary Examination.  After Preliminary Examination is complete, the applicant will then have approximately 30 months from the applications priority date present the examined PCT application to the countries in which patent protection is desired. Because the PCT application has already gone through Preliminary Examination before filing, the corresponding time it takes to receive a granted patent in a selected country is reduced (sometimes, it’s faster to get a US patent going the PCT route!).

So, the PCT application is not a ‘world-wide patent’.  It is still up to the country’s Patent Office to grant you a patent on a PCT application, and there are obviously more expenses after the initial filing.  A PCT application simply the easiest way of having a SINGLE recognized application for most of the countries in the world, rather than having to recreate and refile a patent application in every country’s individual language/rules.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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