Understanding International Patent Law: Are Patents Truly International?

Innovators often dream of their creations making a global impact. But when it comes to intellectual property, a common misconception arises: do patents automatically protect your invention worldwide? The simple answer is no. A patent granted in one country, like the United States, only protects within that country’s borders. To secure your ideas globally, you need a strategic approach to international patent law.

At Boyle Fredrickson, we specialize in intellectual property. We understand that your ideas set you apart, and our dedicated team is here to help you navigate the complexities of protecting them, no matter where your business operates.

In this guide, you will learn:

• Why national patents don’t offer global protection and the importance of international patent strategies.
• The fundamental principles and scope of international patent law.
• Key international treaties that streamline global patent applications, including the PCT, Paris Convention, and TRIPS Agreement.
• The role of the World Intellectual Property Organization (WIPO) in promoting and facilitating international IP protection.
• A clear outline of the steps involved in navigating the international patent application process.
• Essential factors to consider when choosing a specialized law firm to assist with your global patent portfolio.

Overview of International Patent Law

Definition and Importance: International patent law refers to the frameworks and treaties that facilitate the process of seeking patent protection across multiple countries. It’s crucial because it allows inventors to safeguard their innovations in key markets worldwide, preventing others from making, using, or selling their invention without permission. Without global protection, your innovative products or processes could be legally replicated and sold by competitors in countries where you haven’t secured patent rights.

Scope of International Patent Law: There isn’t a single “international patent” that grants global protection. Instead, it involves a system of national laws and international agreements that simplify the process of applying for patents in multiple jurisdictions. These systems help streamline applications and provide a window for inventors to decide where they ultimately want to seek patent grants.

Key Treaties in International Patent Law

Several international treaties are fundamental to navigating global patent protection:

• Patent Cooperation Treaty (PCT): Administered by the World Intellectual Property Organization (WIPO), the PCT allows applicants to file a single “international” patent application. This application secures a filing date for any subsequent national phase application in all designated PCT member countries, streamlines the initial filing process, and defers the significant costs of national filings for up to 30 or 31 months.
• Paris Convention for the Protection of Industrial Property: One of the oldest and most significant IP treaties, the Paris Convention establishes the “right of priority.” This means that if you file a patent application in one member country, you have up to 12 months to file corresponding applications in other member countries and claim the benefit of your original filing date.  The Paris Convention is the foundation on which the PCT application establishes a filing date for subsequent national phase applications.
• TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights): Administered by the World Trade Organization (WTO), TRIPS sets minimum standards for intellectual property protection that WTO member countries must provide. This includes provisions for patent protection across all fields of technology, harmonizing patent laws globally, and ensuring enforceability across borders.

Role of the World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization (WIPO) plays a central role in the international patent system. As a specialized agency of the United Nations, WIPO is dedicated to promoting the protection of intellectual property worldwide.

Functions of WIPO

WIPO administers various international treaties, including the PCT, facilitating efficient global IP protection. They also provide global services for registering IP rights, offer dispute resolution mechanisms, and contribute to harmonizing IP laws through uniform standards and infrastructure.

WIPO’s Initiatives in Promoting International Patents

WIPO’s PATENTSCOPE database, for example, offers free access to international patent applications, enabling inventors and businesses to conduct prior art searches and gain insights into global innovation trends. Through its various initiatives, WIPO aims to simplify the process, reduce costs, and increase certainty for international patent filers.

Navigating the International Patent Process

The process of obtaining international patent protection typically involves several strategic steps. This guide outlines the two primary paths inventors typically take to secure their intellectual property globally.:

Path 1: The PCT International Application Route

1. Initial Filing (Priority Application): Most inventors begin by filing a national patent application in their home country (e.g., with the USPTO). This establishes a “priority date.”
2. Filing Under the PCT: Within 12 months of your priority date, you can file a single PCT international application. This application designates the PCT member countries where you might eventually seek protection.
3. International Search and Examination: During the PCT’s “international phase,” a designated International Searching Authority (ISA) conducts a search for relevant prior art and issues a Written Opinion on your invention’s patentability. The search is conducted 18 months from the priority date and provides valuable insights into the patentability of the claimed invention before significant national costs are incurred.
4. National/Regional Phase Entry: At any point during the international phase (either 30 or 31 months from your priority date), you must decide which specific countries or regions you wish to pursue patent protection in. You then “enter the national phase” in those chosen jurisdictions, filing required documents, translations, and fees with each national or regional patent office. Each country will then examine your application according to its own laws.  National phase applications can be spaced apart after the search report is issued at 18 months and before the 30 or 31 month expiration date to spread out the costs of these national phase applications.

Path 2: Direct National Filings in Foreign Countries

As an alternative to the PCT route, you can choose to file patent applications directly in individual foreign countries where you specifically wish to seek protection. This path is often considered when an inventor has a clear, limited set of target countries.

1. Direct Foreign Filings (Within 12 Months of Priority Date)

Similar to the PCT route, these direct filings must also be submitted within 12 months of your initial priority date to benefit from that earlier filing date.

• Individual National Examination

Once filed, the examination of your patent application will proceed independently within each country according to its specific patent laws and regulations.

Choosing an Intellectual Property Law Firm for International Protection

Given the complexities of varying national laws and the strategic considerations involved, partnering with a specialized intellectual property law firm is essential.

• Factors to Consider: Look for a firm with deep experience in intellectual property law, a proven track record of international filings, and a strong network of trusted associates in key global markets. Their ability to provide expert counsel and navigate diverse legal landscapes will be invaluable.
• Benefits of Specialized Patent Law Firms with International Experience: While there is no single “international patent attorney” who practices law in all countries, a specialized firm like Boyle Fredrickson has established relationships with a global network of attorneys. This allows us to seamlessly manage your international IP portfolio, ensuring that your applications are filed correctly and prosecuted effectively in each target country. Our attorneys, seasoned in diverse technical disciplines, work closely with our international associates to protect your ideas, thoughts, and visions wherever your business takes you. We provide personalized service and attention to detail not found anywhere else.

Conclusion

Securing international patent protection is a vital step for innovators with global ambitions. While the process requires careful planning and navigation through various treaties and national laws, systems like the PCT, coupled with the expertise of a specialized intellectual property law firm, streamline the journey. By understanding the landscape and strategically leveraging global networks, you can confidently protect your valuable innovations across borders.

At Boyle Fredrickson, we are dedicated to maximizing your competitive advantage through high-quality, cost-effective legal services. With over 16,000 foreign patent application filings and a quarter-century of focused intellectual property experience – contact us to learn more.