A patent issued by the United States Patent and Trademark Office (USPTO) provides patent protection to an inventor only within the United States. Because each country has its own patent laws, other countries do not provide patent protection to a U.S. patentee, nor does the United States provide patent protection to a foreign patentee. Originally, if a U.S. inventor wished to obtain patent protection in other countries, he or she was required to obtain patents from each country in which patent protection was desired, which obviously entailed substantial time and expense. Eventually, however, international cooperation helped streamline the process of obtaining patents in other countries in many cases.
The first international treaty applying to patents was the Paris Convention for the Protection of Industrial Property (Paris Convention), which was first signed in 1883. Countries that signed the Paris Convention (“party countries”) were required to make their patent laws available to inventors from other party countries. However, although the filing process of each party country was available to inventors from other party countries, inventors still had to go through the patent filing process to obtain patent protection. Finally, in the mid-20th century, a number of regional patent offices were established.
Regional Patent Offices
Regional patent offices are products of regional treaties. Although each has its own rules, the regional patent offices provide a single patent filing system for all member countries. The patent applicant chooses the member countries from which he or wishes patent protection. A patent issued by a regional office generally confers upon the patentee the same protection as would be provided under the individual laws of the party countries. The European Patent Office (EPO), founded in 1973, originally provided centralized patent processing for about 20 European countries, with former members of the Soviet Union joining in the European Patent Convention, which governs the EPO, joining later. As of 2004, the European Patent Office represented 28 countries, with several more countries expected to join. In addition, five other countries recognize patents issued by the EPO but are not members of the EPO.
There are several other regional patent offices, some of which are smaller organizations made up of members of the EPO. There are two regional patent offices in Africa: the African Regional Industrial Property Organization (ARIPO), and the African Intellectual Property Organization (OAPI), which each have 16 members. Applicants to ARIPO receive national patents for each of the member countries in which patent protection is sought. The OAPI provides a uniform patent law for all member countries that is applied by all courts of its member countries, and an OAPI patent application automatically seeks patent protection from all its member countries. Also in the OAPI, existing patent protections may be extended to new countries that join the OAPI.
The Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) of 1970 was created to simplify the patent application process for international patent protection. Prior to the PCT, the primary means for obtaining international patent protection was the Paris Convention for the Protection of Industrial Property. Under the Paris Convention, still in effect, applicants are required to submit separate filings to secure patent protection in each country where protection is sought. However, under the PCT, with over 120 signatory countries, applicants may secure patent protection for all signatory countries simultaneously with fewer procedural steps. On a practical level, where patent protection is only sought in only one or two countries, choosing to utilize the Paris Convention may likely be more cost effective and expeditious.
Plan Strategically for Patent Filing
If you are considering international protection for your invention, your patent application may be filed pursuant to the Patent Cooperation Treaty to faciliate patent protection in many countries around the world. If this is of interest, you should schedule a meeting with one of our PCT specialists, at your earliest convienance, to discuss different filing strategies.