Where is my patent Enforceable?

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In a global economy patents and territorial rights are frequently discussed together.  Generally, a United States patent is enforceable only in the United States.  This post explores whether a U.S. inventor or patent holder can enforce patent rights in other countries.  Specifically, this post discusses the following topics? 

  • the mechanism of obtaining patents in other countries 
  • whether acts outside the United States are covered by U.S. Patents 

Obtaining Foreign Patents 

When inventive ideas are in the process of being protected by a patent or patent portfolio, inventors usually think about filing one or more U.S. patent applications.  When these applications issue as U.S. patents, the inventors or the patent owner have rights afforded by the U.S. patent system

In the beginning of this patenting process, the Patent Cooperation Treaty (PCT)—a treaty between various countries—allows inventors to file an international application (sometimes called a PCT application) to initiate a process of obtaining patents in each country of their choice.  Before it can happen, however, the inventor chooses in which countries (called national stages) he wishes to get patent protection. 

Frequently, by the time the decision has to be made, the U.S. patent application has gone through some examination and the U.S. patent examiner rendered some opinions regarding patentability.  Also, after filing their PCT application, the inventors will be provided with an international patentability search report.  This report gives the inventors a list of prior art references to give the inventors some idea of how novel their invention may be.  Armed with this understanding, the inventor or owner makes the decision to select specific countries to enter from their international application (these are called “national stage” or “counterpart” applications).  Frequently these decisions are made based on the potential market for the product, the cost of patent filings, how strongly a country protects patents, and other legal and business considerations.  Once the counterpart applications are filed in those countries, the patents will be examined in accordance with local laws and the inventor/owner is issued a patent in that country, for example Canada.  In this situation, the inventor has a U.S. patent and a Canadian patent, thus expanding the territorial scope of protection for her invention. 

Territorial Limits of the U.S. Patent Reach 

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Now consider a situation where only the U.S. Patent is available.  Under U.S. patent law, only certain acts qualify as patent infringement.  Infringing acts are defined as using, making, selling, offering for sale in the United States and importing into the United States the patented invention.  With globalization and manufacturing of products frequently occurring outside the United States, does the U.S. patent owner have any rights against a foreign company that through a chain of subsidiaries bring products into the United States?

The answer is “maybe.”  This inquiry is fact-specific, but in general if the activity occurring in another country is directed toward the United States, it may qualify as an act of patent infringement in the United States, and therefore would infringe a U.S. patent. 

Whether you have foreign counterpart patents or only U.S. patents, an experienced patent broker should be able to help you derive the maximum value from your patent portfolio.