A United States issued patent is only enforceable within the borders of the United
States, such that infringement of a United States patent occurs only if another person
makes, uses or sells the invention in the United States or its Territories. Persons or
entities interested in world-wide patent protection, can take advantage of the Patent
Cooperation Treaty ("PCT") through the PTO. The PCT has a centralized filing and
searching procedure that results in a relatively simple and less expensive (compared to
having to go through each country directly) foreign patent application filing process.
Although the PCT process is easier than filing an application directly with each
individual country, it is still a somewhat complicated and relatively expensive procedure.
Basically, the PCT requires that an international application be filed within 12
months of filing the United States patent application in order to retain the priority date
of the United States application. The initial fees for foreign protection are due within 1
month of entering the international stage (therefore, within 13 months of filing the
United States application in order to retain its priority). Fees are also due within 20
months of filing the United States application. Additional fees and costs may be
required to translate the patent application into the languages required by the selected
In many foreign countries, particularly most of the European countries, disclosure
of the invention to any member of the public, anywhere in the world, prior to the filing
of the patent application, will work a forfeiture of any possible patent protection. This
situation can be avoided by filing a United States patent application before such a
disclosure takes place and thereafter filing corresponding foreign applications not more
than one year later. The foreign applications, pursuant to the PCT, will be given filing
dates which are the same as the United States patent application's filing date.
The cost of pursuing foreign patents can be very high, depending on which
countries and how many countries are selected. Generally, a patent attorney who is
licensed in the relevant jurisdiction (i.e., the European Union) must be engaged to assist
attorneys located/licensed in the United States. The PCT procedures described above
do allow the patent inventor or owner to "buy" some time until he or she must commit
to the more significant costs of the foreign patent process.