Hi. My name is Mark Trenner. I’m a patent attorney. I started my law firm, the Trenner Firm, in 2004, that is over 10 years ago and I’ve been helping individual inventors, small businesses, start-ups and entrepreneurs protect their inventions with patent applications. In the past 15 years that I’ve been practicing, I’ve written hundreds of patent applications.
Today I’m here to answer your question, does a United States patent application protect my invention worldwide. The answer is no. It is a US patent application, after all. It’s going to protect your invention in the US. What do you do if you want to protect your invention outside of the US? Well, there are a couple of different options but I just want to warn you up front, they are all very costly.
Probably the most common way to protect your invention outside of the US is to file what is called a PCT or Patent Cooperation Treaty patent application. We can actually file that at the same time that you file your US patent application. We can file the PCT out of the US Patent office. What the PCT patent application does is it gives you a priority to protect your invention in all these other countries, not all countries, but most countries that are members of what is called the Paris Convention, which is a patent treaty. You can do that within 30 months of your original or your priority filing date. Now, keep in mind, if you file a provisional application, that’s going to be your priority date so the 30 months may start counting when you file the PCT or it may go back 12 months or sometime before that when you file the provisional or regular patent. But, that is the most common.
You can also file in foreign countries directly. And, some countries, for example, Taiwan, is not a member of the Paris Convention. You will have to file directly in those countries. The PCT won’t help you in those countries. You can file directly in those countries but like I said it is very expensive.
The government filing fee for filing a PCT application in the US is right around $3,000.00 and this does not include the attorney’s fees. If you want to file in a foreign country, you will have to pay foreign attorney’s fees, any monetary exchange rates and if you go into a foreign language country, a non-English speaking country, you will also have to pay for translation. The costs add up real fast. So, you will want to sit down with your patent attorney and talk to them about whether filing internationally or whether even filing a PCT application will be worth it in the long run for you, for your product and for your business goals. A lot of the time, for most individual inventors and start-up companies, unless you have a market somewhere else, you’re going to want to focus primarily on the US and your US patent. Now, the US patent is going to protect infringing imports. If you have an issued patent, you’re going to be able to stop someone from making it in China or Mexico and bringing into the US. Keep that in mind.
I hope I answered your question does my US patent application protect my invention world-wide.
