Filing Patent Applications in Foreign Countries

Thoughts to Paper - February 8, 2024

Each country has their own patent office so to get a patent in foreign countries, you need to apply for a patent in each country you want a patent in. In addition to filing in the United States, you also need to file in Canada, Great Britain, China, Japan, and so forth. Timing, however, is important. If you don’t file foreign patent applications by a certain time, you may give up the right to do so.

1. File a patent application before you show your invention to the public.

Rule number one. Before you show your invention to the public, you should file a patent application. This is because many countries have a rule which says once you show your invention to the public anywhere, you can no longer file a patent application. The safest approach then, is to make sure you file a well written patent application in one country before you show your invention to the public. This first patent application could be in the United States.

2. File foreign patent applications within 12 months of the first patent application you filed.

Rule number two. Within 12 months of filing your first patent application, file a patent application in each foreign country you also want a patent in.

For example, if your first patent application was filed Jan 1, 2024 in the United States, you’ll want to file a patent application in Canada, Great Britain, China, Japan, and so forth within 1 year, so by Jan 1, 2025. If you do not file all your foreign patent applications within 12 months of when you filed your first patent application, you may give up the right to get a patent in many countries. Whether you can still file foreign patent applications after 12 months of when you filed your first patent application will depend on the local laws of each country and you’ll then need a patent attorney or patent agent to check the local laws of each country you are interested in to see if it is too late to file.

To be safe, follow rule 1 and rule 2. First, file your foreign patent applications before you show the invention to the public. Two, file all of your foreign patent applications within 12 months of your first patent application filing.

Note that foreign design patent applications must be filed within 6 months of your first patent application filed. So, within 12 months to file foreign utility patent applications but within only 6 months to file foreign design patent applications.

3. File a PCT Patent Application within 12 months of the first patent application filed, if you need more time.

Rule number three. If you need more than 12 months after the first patent application is filed, you can optionally file a PCT Patent Application within 12 months of the first patent application filed. If you timely file a PCT Patent Application, you’ll buy yourself 18 more months of time to file foreign utility patent applications.

For example, if your first patent application was filed Jan 1, 2024 in the United States, normally you need to file all your foreign utility patent applications by Jan 1, 2025 (within 12 months). However, what if you need more time past Jan 1, 2025? You can extend your time by filing a PCT Patent Application by Jan 1, 2025, which will buy you 18 more months of time until July 1, 2026. Then, by the extended date of July 1, 2026, you must file all your foreign utility patent applications.

The PCT Patent Application is not a patent. It is a time extender. You use it to buy yourself 18 more months of time to file foreign utility patent applications.

Conclusion

Rule 1: File a patent application before you show your invention to the public.
Rule 2: File a foreign utility patent application in each country you want to get a patent in within 12 months of that first patent application you filed. In addition, file a foreign design patent application in each country you want to get a patent in within 6 months of that first patent application you filed.
Rule 3: Optionally, if you need more than 12 months to file all your foreign utility patent applications, file a PCT Patent Application before those 12 months are up to buy yourself 18 more months of time to file all your foreign utility patent applications.

Timing is very important in filing foreign patents. Work with your patent attorney or patent agent to lay out a timeline for foreign patent application filings.