In short, you must obtain at least one patent in each jurisdiction where you want to be protected. A United States patent will only protect you in the United States. As such, if you have a United States patent on your invention, a competitor of yours can make your invention outside of the United States, provided you do not have a patent in the jurisdiction where they are making it.
Obtaining patent protection outside of the United States typically involves hiring a patent attorney or patent agent licensed in the jurisdiction (e.g., the country) you are concerned with, and having him or her file your patent application in that jurisdiction. This is a wise approach because though the general premise of patent law is uniform across all jurisdictions (e.g., if your invention is new, nonobvious, and properly disclosed, we’ll give you a patent), each jurisdiction has nuances, and if those nuances are not appreciated, securing the patent can be much more difficult than if local counsel were engaged.
If you are interested in filing in many other countries, there are procedures in place that can streamline the examination of the patent application. However, it is worth noting that obtaining patent protection in many other countries is typically very costly. Some costs include attorney’s fees for each of the jurisdictions, translations of the patent application into the appropriate country’s language, and prosecution, issue, and maintenance fees. Of course, if an invention has the potential to severely disrupt the markets, being protected in many jurisdictions often outweighs the costs.
Additionally, when foreign patent applications are being prosecuted (e.g., discussed with foreign patent examiners), those patent examiners are not bound by the outcomes of other jurisdictions. That is, if a patent application for a telephone is being prosecuted in Japan, the Japanese examiner owes absolutely no deference to what a United States patent examiner did during prosecution of a counterpart United States patent application. However, it is common practice by patent attorneys working on a case that is being prosecuted in multiple jurisdictions (e.g., in the United States, China, Europe, India, Brazil, etc.) to be aware of everything that is transpiring in the patent family (e.g., the entire group of patent applications for a given invention). This is mostly for two reasons.
One, if a patent is obtained in one jurisdiction (e.g. the United States), there is a decent chance that similar arguments can be made in other jurisdictions to secure patent protection in those jurisdictions. Again, patent examiners are not bound by the decisions in other jurisdictions, but if the underlying claim language and arguments that procured the patent in a first jurisdiction are sound, it stands to reason, and it turns out to be the case in practice, that applying them to a second, different jurisdiction commonly will yield favorable results in that jurisdiction. Two, when prosecuting a patent application on an invention in many jurisdictions, having the claim language be as uniform as possible across all issued patents significantly strengthens a case that that claim language is very defensible. Like the patent examiners, the US courts will not be bound by the language of a Japanese patent during a US patent infringement case. However, being able to show the court that the claim language of the entire patent family, across all jurisdictions, is uniform, will make invalidating the patent that much more difficult.
This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.
©John P. Powers, 2020, all rights reserved.